The Complainant is Equifax Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondents are Zhichao Yang, 杨智超 (Zhichao Yang) and 林彦晓 (Yan Xiao Lin)1 , China.
The disputed domain name <myequifaxlogin.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain names <myequifazx.com>, <myequifgax.com>, and <myequifqax.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. The disputed domain name <myequifex.com> is registered with NameSilo, LLC. The disputed domain name <myequiffax.com> is registered with GoDaddy Online Services Cayman Islands Ltd.
Chengdu West Dimension Digital Technology Co., Ltd, Alibaba Cloud Computing (Beijing) Co., Ltd., NameSilo LLC and GoDaddy Online Services Cayman Islands Ltd are referred to below individually and collectively as the “Registrar”.
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On the same day, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain names. On October 5, 6 and 8, 2021, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2021, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment in English to the Complaint on October 13, 2021.
On October 12, 2021, the Center transmitted another email in English and Chinese to the Parties regarding the language of the proceeding. On the following day, the Complainant requested that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint together with the amendment to the Complaint in English and Chinese, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 15, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 25, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant provides information solutions and human resources business process outsourcing services. The Complainant holds multiple registrations for the EQUIFAX trademark, including the following:
- United States trademark registration number 1,027,544, registered on December 16, 1975, specifying services in class 36;
- United States trademark registration number 1,045,574, registered on August 3, 1976, specifying services in class 35; and
- Chinese trademark registration number 2015983, registered on October 7, 2002, specifying services in class 42.
The above trademark registrations remain current. The Complainant also registered the domain name <equifax.com>, created on February 21, 1995, that it uses in connection with a website where it provides information about itself and offers its services, including credit report assistance, credit monitoring and identity theft protection.
The Respondents are named as two individuals, both resident in China, as verified by the Registrar.
The disputed domain names were registered on the following dates by the following registrants:
|
Dispute domain name |
Date of registration |
Registrant |
|
<myequifex.com> |
August 22, 2019 |
Zhichao Yang |
|
<myequiffax.com> |
August 22, 2019 |
Zhichao Yang |
|
<myequifazx.com> |
May 18, 2021 |
杨智超 (Zhichao Yang) |
|
<myequifgax.com> |
May 18, 2021 |
杨智超 (Zhichao Yang) |
|
<myequifqax.com> |
May 18, 2021 |
杨智超 (Zhichao Yang) |
|
<myequifaxlogin.com> |
September 6, 2021 |
林彦晓 (Yan Xiao Lin) |
The disputed domain names resolve to landing pages that display Pay-Per-Click (“PPC”) links, including some labelled “Credit Report”, “Credit Scores”, and “Identity Theft Protection”. MX records have been set up for each disputed domain name.
The disputed domain names are identical or confusingly similar to the Complainant’s EQUIFAX trademark.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondents to register or use the EQUIFAX trademark in any manner. By including links on the websites associated with the disputed domain names to other sites for services related to or competitive with those offered by the Complainant under the EQUIFAX trademark, the Respondents have failed to create a bona fide offering of goods or services under the Policy. The Respondents have never been commonly known by any of the disputed domain names. By using the disputed domain names in connection with monetized parking pages, the Respondents’ actions are clearly commercial.
The disputed domain names were registered and are being used in bad faith. The EQUIFAX trademark is clearly famous and/or widely known, given that it is protected by at least 221 trademark registrations in at least 56 jurisdictions worldwide, the oldest of which was used and registered 46 years ago. Because the disputed domain names are so obviously connected with the Complainant, the Respondents’ actions suggest opportunistic bad faith in violation of the Policy. UDRP panels have repeatedly held that using domain names in connection with monetized parking pages under the circumstances present here constitutes bad faith.
The Respondents did not reply to the Complainant’s contentions.
The Complaint, as amended, initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that all the disputed domain names are held by a single person or entity and requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s consolidation request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.11.2.
As regards common control, the registrant of all but one of the disputed domain names is the same person (Zhichao Yang). All the disputed domain names incorporate the correct or a misspelt version of the same trademark and they all resolve to similar if not identical landing pages with PPC links. According to information provided by the Complainant, all the disputed domain names use the same name servers and the same MX records have been set up for all of them. In these circumstances, the Panel is persuaded that all the disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for two disputed domain names are in English and those for four disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names are composed of the English word “my” and its trademark and that they have only ever been used with websites inEnglish.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The landing pages to which the disputed domain names resolve are also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent the Parties an email regarding the language of the proceeding and a notification of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence presented, the Panel finds that the Complainant has rights in the EQUIFAX mark.
The disputed domain name <myequifaxlogin.com> wholly incorporates the EQUIFAX mark. It also includes the word “my”, as its initial element, and the word “login”, but the mark remains clearly recognizable within the disputed domain name. The other five disputed domain names incorporate a misspelt version of the EQUIFAX mark, each one with a letter added or misstyped, and they also include the word “my” as their respective initial elements. Despite the misspellings and the additional word, the mark remains clearly recognizable within each of these disputed domain names too.
The only additional element in each disputed domain name is the Top-Level Domain (“TLD”) suffix “.com” but, as a mere technical requirement of registration, this element may generally be disregarded in the comparison between a domain name and a trademark for the purposes of assessing confusing similarity.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain name <myequifaxlogin.com> gives the impression that it is associated with a website where users can log in to their Equifax account. However, the Complainant submits that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trademark in any manner. All the disputed domain names resolve to landing pages displaying PPC links to websites for services that compete with those of the Complainant. The PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked sites, or the commercial gain of the operators of the linked sites, or both. In these circumstances, the Panel does not consider that the Respondent is using the disputed domain names in connection with a bona fide offering of goods and services, nor is he making a legitimate noncommercial or fair use of the disputed domain names.
As regards the second circumstance above, the Respondent is variously identified in the Registrar’s WhoIs database as Zhichao Yang, 杨智超 (Zhichao Yang) and 林彦晓 (Yan Xiao Lin), none of which resembles any of the disputed domain names. There is no evidence on the record that the Respondent has been commonly known by any of the disputed domain names.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain names were registered between 2019 and 2021, years after the Complainant obtained its trademark registrations for EQUIFAX, including in China where the Respondent is resident. The EQUIFAX mark is a coined word with no apparent meaning than as the Complainant’s trademark. The disputed domain name <myequifaxlogin.com> wholly incorporates the EQUIFAX mark in combination with the words “my” and “login”, which gives the false impression that it will resolve to a website where users can log in to their Equifax account. The other five disputed domain names incorporate a misspelt version of that mark, preceded by the word “my”, for no apparent reason other than to take advantage of Internet users who mistype the EQUIFAX mark in an Internet browser. These circumstances give the Panel reason to find that the Respondent knew of the Complainant and its EQUIFAX trademark at the time that he registered all the disputed domain names and that he targeted that mark.
The Respondent uses the disputed domain names in connection with landing pages displaying PPC links to websites offering credit reports, credit scores, identity theft protection, and other services that compete with the Complainant’s services. The PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of those linked websites, or both. In view of these circumstances, the Panel considers that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s EQUIFAX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <myequifaxlogin.com>, <myequifazx.com>, <myequifex.com>, <myequiffax.com>, <myequifgax.com>, and <myequifqax.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: December 2, 2021
1 The original Complaint was filed against privacy services. The amendment to the Complaint added the Registrar-identified underlying registrants, which the Panel considers the appropriate Respondents.