Complainant is Equifax Inc. of Atlanta, Georgia, United States of America ("United States"), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Shi Lei of Hangzhou, Zhejiang, China, self-represented.
The disputed domain names <equifasecurity.com>, <equifaxsecuity.com>, <equifaxsecurety2017.com>, <equifaxsecurit.com>, <equifaxsecurty.com>, <equifax201.com>, <equifax2016.com>, <equifax2017.com>, <equifax2018.com>, <equifa2017.com>, <wwwequifaxsecurity.com> and <wwwequifax2017.com> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2017. On September 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On October 3, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on October 4, 2017. Respondent requested that Chinese be the language of the proceeding on the same day.
The Center verified that 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. Respondent did not submit any response save for its email communications on October 4, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on November 2, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on November 13, 2017. 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.
Complainant, Equifax Inc., is a company incorporated in Atlanta, Georgia, United States. Complainant is a global information solutions company. Complainant organizes, assimilates and analyzes data on more than 820 million consumers and more than 91 million businesses worldwide, and its database includes employee data contributed from more than 7,100 employers. Complainant is a member of Standard & Poor's (S&P) 500 Index, and it employs approximately 9,900 people worldwide.
Complainant has exclusive rights in the EQUIFAX marks. Complainant is the exclusive owner of numerous EQUIFAX trademarks in jurisdictions around the world, including in Chinese trademark (the Chinese Trademark registration number 2015983) since October 7, 2002, and the United States trademark registered since May 14, 1991 (the United States Trademark registration number 1644585) (Annex 9 to the Complaint). Complainant also owns and operates domain names which contain the EQUIFAX mark in its entirety, such as <equifax.com>, which was created on February 21, 1995.
Respondent is Shi Lei, apparently an individual residing in Hangzhou, Zhejiang, China. The disputed domain names <equifaxsecurety2017.com> and <equifax2017.com> were registered on September 7, 2017. The disputed domain name <equifaxsecurit.com> was registered on September 9, 2017. The disputed domain names <equifasecurity.com>, <equifaxsecuity.com>, <equifaxsecurty.com>, <equifax201.com>, <equifax2016.com>, <equifax2018.com>, <equifa2017.com>, <wwwequifaxsecurity.com> and <wwwequifax2017.com> were registered on September 10, 2017. All disputed domain names previously resolved to the parking pages, which included links for services competitive with those offered by Complainant (Annex 2 to the Complaint). Currently, <equifax2017.com> does not resolve to any active website, while the use of the other disputed domain names remains unchanged.
Complainant contends that the disputed domain names are all confusingly similar to Complainant's EQUIFAX trademarks. Most (10 of 12) of the disputed domain names include the EQUIFAX Trademark in its entirety plus a date or number (such as "2017") and/or one or more words (or typographical variations thereof) related to Complainant and/or a recent cybersecurity incident (such as "security," "securety") and/or the characters "www". The other two disputed domain names contain a typographical variation of the EQUIFAX Trademark ("equifa") plus the year "2017" or the word "security". These are not sufficient to eliminate the confusing similarity.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that all disputed domain names be transferred to it.
Respondent did not reply to Complainant's contentions.
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Previous panels under the Policy have allowed English in proceedings against the same Respondent as in this case;
b) The disputed domain names consist entirely of "letters from the English alphabet";
c) As shown by the email address associated with Respondent (Annex 1 of Complaint), "the Respondent communicates through an email address... which comprises entirely of Latin characters";
d) As shown in Annex 2 of the Complaint, the disputed domain names are being used by Respondent in connection with websites containing only English (such as "Equifax Credit Report Score", "Equifax Monitoring", and "Equifax Identity Theft");
e) Most of the disputed domain names contain the English word "security" (or a typographical variation thereof) – "which... reflects that the Respondent must have some understanding of the English language".
Respondent has requested that Chinese be the language of the proceeding for the following reasons:
a) The Complaint was submitted in English. Respondent has to use translation software to read, and many translations (by translation software) are not accurate. This may have big impacts on the result of the proceeding;
b) In the absence of any agreement between the Parties or in the absence in any agreement in domain name Registration Agreement, the language of the administrative proceeding shall be in the language of the Registration Agreement;
c) Therefore, Respondent requests that the relevant provisions under the Policy are strictly implemented, and the language of administrative proceedings should be consistent with the language of the Registration Agreement, that is, Chinese.
Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:
"Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement." (WIPO Overview 3.0, section 4.5.1; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the United States, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names includes Latin characters (and English words) (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names are registered in Latin characters and/or English words, rather than Chinese script; (b) the contents of the websites resolved by all disputed domain names are in English rather than in Chinese; (c) The Center has notified Respondent of the proceeding in both Chinese and English; (d) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the EQUIFAX marks acquired through registration. The EQUIFAX marks have been registered around the world, including China (since 2002), and the United States (since 1991). Ten of the twelve disputed domain names <equifaxsecuity.com>, <equifaxsecurety2017.com>, <equifaxsecurit.com>, <equifaxsecurty.com>, <equifax201.com>, <equifax2016.com>, <equifax2017.com>, <equifax2018.com>, <wwwequifaxsecurity.com> and <wwwequifax2017.com> comprise the EQUIFAX mark in its entirety with a date or number (such as "2017") and/or one or more words (or typographical variations thereof) related to Complainant and/or a recent cybersecurity incident (such as "security", "securety") as the suffixe(s) and/or the characters "www" as the prefix. The other two disputed domain names <equifa2017.com> and <equifasecurity.com> comprise a typographical variation of the EQUIFAX Trademark ("equifa") and the year "2017" or the word "security" as the suffix. These do not eliminate the confusing similarity between Complainant's registered trademarks and the disputed domain names.
All disputed domain names also contain the gTLD suffix ".com". In relation to the gTLD suffix, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:
"The applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test" (WIPO Overview 3.0, section 1.11).
Thus, the Panel finds that disregarding the gTLD suffix ".com", the disputed domain names are confusingly similar to the EQUIFAX marks.
The Panel therefore holds that Complainant fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein.)
According to the Complaint, Complainant is a global information solutions company, and it is a member of Standard & Poor's (S&P) 500 Index, and it employs approximately 9,900 people worldwide. Complainant has rights in the EQUIFAX marks in China since 2002, and in the United States since 1991, which precede Respondent's registration of the disputed domain names (2017).
Moreover, Respondent is not an authorized dealer of EQUIFAX-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain names or reasons to justify the choice of the term "equifax" (or typographical variation "equifa") in the disputed domain names and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the EQUIFAX marks or to apply for or use any domain names incorporating the EQUIFAX marks and Respondent has, through the use of confusingly similar domain names and their associated webpage contents, created a likelihood of confusion with the EQUIFAX marks. End users are led to believe that the websites at the disputed domain names are either Complainant's or sites of an official authorized partner of Complainant, which they are not;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2017, long after the EQUIFAX marks became internationally known. The disputed domain names are confusingly similar to Complainant's EQUIFAX marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, all disputed domain names resolved to the parking pages when the Complaint was filed, which included links for services competitive with those offered by Complainant (Annex 2 to the Complaint). The change of the use of the disputed domain name <equifax2017.com> does not alter the Panel's finding in this regard.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product or service on the websites or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.
The Panel finds that Complainant has a widespread reputation in the EQUIFAX marks with regard to its products and services. Complainant is a global information solutions company, which organizes, assimilates and analyzes data on more than 820 million consumers and more than 91 million businesses worldwide. Complainant is a member of Standard & Poor's (S&P) 500 Index, and it employs approximately 9,900 people worldwide. Complainant has rights in the EQUIFAX marks in China (since 2002) and internationally. It is not conceivable that Respondent would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain names (in 2017), particularly given that Respondent has used Complainant's marks and the websites at the disputed domain names contain the EQUIFAX marks and links to Complainant's competitors' websites.
Thus, the Panel concludes that the disputed domain names were registered in bad faith.
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain names, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location". To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that the intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the EQUIFAX marks, the confusingly similar disputed domain names, as well as the contents of the websites mentioned above, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's websites. In other words, Respondent has, through the use of the disputed domain names and webpage contents, created a likelihood of confusion with the EQUIFAX marks. Noting also the implication on the websites that they are the official websites of Complainant, potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant's sites or sites of an official authorized partner of Complainant, which they are not. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domains <equifasecurity.com>, <equifaxsecuity.com>, <equifaxsecurety2017.com>, <equifaxsecurit.com>, <equifaxsecurty.com>, <equifax201.com>, <equifax2016.com>, <equifax2017.com>, <equifax2018.com>, <equifa2017.com>, <wwwequifaxsecurity.com> and <wwwequifax2017.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: December 12, 2017