WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Domain Admin, Whois Privacy Corp.

Case No. D2021-3317

1. The Parties

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 Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <myequifaxreport.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 the Respondent of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed Fabrice Bircker as the sole panelist in this matter on November 16, 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.

4. Factual Background

The Complainant, Equifax Inc., was originally incorporated in 1913 and is a member of the Standard & Poor’s (S&P) 500 Index.

With approximately 11,000 employees and activities in 24 countries in America, Europe, and Asia, the Complainant is a leading global provider of information solutions and human resources business process outsourcing services for businesses, governments, and consumers.

In particular, the Complainant offers a credit reporting service that provides consumers with a summary of their credit history, and certain other information, reported to credit bureaus by lenders and creditors.

The Complainant’s activities are protected by a large trademarks portfolio covering several dozens of jurisdictions around the world, and including the following trademarks, all in the name of the Complainant:

- United States trademark registration No. 1045574 for EQUIFAX in class 35, filed on July 9, 1975, registered on August 3, 1976, and regularly renewed since then;

- United States trademark registration No. 1644585 for EQUIFAX in classes 35, 36, and 42 filed on February 9, 1990 (first use in commerce in 1975), registered on May 14, 1991, and regularly renewed since then.

The Complainant has also developed an online presence, in particular through its website, available via the <equifax.com> domain name, which has been registered since February 21, 1995.

Nothing is known about the Respondent excepting that, according to the information provided by the Registrar, it is located in the Bahamas.

The disputed domain name was registered on April12, 2021.

It resolves to a parked website that displays pay-per-click links promoting credit reports services, and one of these links consists of “Equifax Free Credit Score and Report”.

Besides, one email server is configured with the disputed domain name.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

In substance, the Complainant contends that the disputed domain name is confusingly similar with its EQUIFAX trademark i) because the generic Top-Level Domain (“gTLD”) <.com> can be disregarded under the first element of the Policy, and because ii) the disputed domain name contains the EQUIFAX trademark in its entirety and said trademark remains recognizable within the disputed domain name despite the addition of other terms.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, notably because 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.

Besides, the Complainant argues that by including commercial links for competing third-party websites on the website associated with the disputed domain name, the Respondent has failed to create a bona fide offering of goods or services under the Policy.

In addition, the Complainant indicates that to its knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any corresponding trademark.

Furthermore, the Complainant contends that by using the disputed domain name in connection with a monetized parking page, the Respondent’s actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.

Registered and Used in Bad Faith

First, the Complainant puts forward that the mere registration of a domain name that is identical or confusingly similar to a prior famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Then, the Complainant contends that it is implausible the Respondent was unaware of the Complainant when it registered the disputed domain name given the fame of its trademark and the fact that it predates it by 46 years.

Besides, the Complainant argues that panels have repeatedly held that using a domain name in connection with a monetized parking page under the circumstances present here constitutes bad faith.

In addition, the Complainant contends that the setting-up of MX records with the disputed domain name, is further evidence of bad faith because this creates the strong possibility that the Respondent intended or intends to use the disputed domain name to send emails as part of a fraudulent phishing scheme.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.

Annex 11 of the Complaint show trademark registrations for EQUIFAX in the name of the Complainant, in particular those detailed in Section 4 above.

Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark(…), the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

This test is satisfied here, as the disputed domain name, <myequifaxreport.com>, identically reproduces the EQUIFAX trademark, and because the added elements, namely “my” and “report” consist of mere dictionary terms, which do not prevent the Complainant’s trademark to remain recognizable (see WIPO Overview 3.0, section 1.8). Besides, the generic top-level domain (“gTLD”) “.com” may be ignored for the purpose of assessing the confusing similarity, because it only plays a technical function.

Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

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], [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.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

In the present proceeding, the Complainant asserts that it has not given its consent for the Respondent to use its EQUIFAX trademark in domain name registration or in any other manner.

Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.

Furthermore, the disputed domain name resolves to a parking page displaying sponsored links promoting activities in which the Complainant intervenes (i.e. credit reporting). It is consistent case-law that such a commercial use that unduly capitalizes on the value of a third party’s trademark and misleadingly diverts consumers given the closeness between the Complainant’s trademark and the disputed domain name, cannot create rights or legitimate interests in the disputed domain name for the purposes of the Policy (see WIPO Overview 3.0, section 2.9, or Payoneer, Inc. v. Jurgen Neeme, WIPO Case No. D2020-0137).

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.

In the present case, the Panel notes that:

- the use of the EQUIFAX trademark predates the registration of the disputed domain name by 46 years,

- “equifax” is a coined word,

- the Complainant has accrued substantial goodwill and international recognition in its EQUIFAX trademark, and UDRP panels have already considered same as enjoying a substantial reputation on the market and even as being well-known (e.g. Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880, Equifax Inc. v. Privacy Protection / Golliardo S.A., WIPO Case No. D2021-2254, or Equifax Inc. v. Whois Privacy, Private by Design, LLC / Damien Surray, WIPO Case No. D2021-2748),

- the disputed domain name identically reproduces the Complainant’s trademark,

- the presence of the term “report” as part of the disputed domain name directly refers to some of the Complainant’s activities (namely realizing and evaluating credit reports),

- the disputed domain name is used for commercial gain, as it resolves to a website featuring pay-per-click links,

- these pay-per-click links promote activities directly competing with the Complainant, what creates a likelihood of confusion given the closeness of the disputed domain name with the Complainant’s trademark,

- one of the pay-per-click links displayed on the website available through the disputed domain name even reproduces the Complainant’s EQUIFAX trademark.

These elements clearly show that the Respondent could not ignore the existence of the Complainant’s EQUIFAX trademark when it registered the disputed domain name and that it is using said disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s prior rights.

In sum, this case falls within the scope of paragraph 4(b)(iv) of the Policy, namely: “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] website or location.”

In addition, given i) the composition of the disputed domain name (in as far it is closely associated with the Complainant’s trademark and activities), ii) the clear absence of rights of the Respondent and iii) the silence kept by the Respondent during this procedure, the Panel is of the opinion that the DNS setup of the disputed domain name with active MX records (what puts the Respondent in a position to send emails unduly impersonating the Complainant), constitutes further evidence of the Respondent’s bad faith.

Indeed, in the circumstances of this case, the fact that the disputed domain name is in the hands of the Complainant constitutes an unbearable threat hanging over the head of the Complainant, especially in light of the fact that fraudulent use of domain names and emails are particularly prevalent in the field of online banking and financing.

In conclusion, for all the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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 name, <myequifaxreport.com>, be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: November 28, 2021