WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Domain Admin, Whois protection / Hulmiho Ukolen, Poste restante

Case No. D2021-4370

1. The Parties

The Complainant is Equifax Inc., United States of America (“U.S.”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, U.S.

The Respondent is Domain Admin, Whois protection, Czech Republic / Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <eqifax.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 7, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint also on January 7, 2022.

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 Respondent of the Complaint, and the proceedings commenced on January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2022.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 3, 2022. 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 is an American provider of information solutions and human resources outsourcing services for businesses, governments and consumers, originally incorporated in 1913.

The Complainant owns numerous EQUIFAX trademark registrations in numerous countries, including the U.S. registrations numbers 1,027,544, 1,045,574, and 1,644,585, respectively obtained on December 16, 1975, August 3, 1976, and May 14, 1991.

The Complainant is also the owner of domain names containing the term “equifax”, such as <equifax.com>, registered on February 21, 1995.

The disputed domain name was registered on August 8, 2004.

The Panel accessed the disputed domain name on February 17, 2021, when it redirected Internet users to third party websites in direct competition with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns at least 221 trademark registrations in at least 56 jurisdictions around the world for marks that consist of or contain the word “equifax” which was first used in commerce and registered in 1975. The disputed domain name contains the EQUIFAX trademark in its entirety, absent a single letter “u”. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the disputed domain name contains sufficiently recognizable aspects of the relevant mark. Further, the overall impression of the designation of the disputed domain name is one of being connected to the trademark of the Complainant. The top-level domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trademark in any manner. By using the disputed domain name to redirect visitors to services that compete with the Complainant, the Respondent has failed to create a bona fide offering of goods or services under the Policy, and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy. Further, by using the disputed domain name in connection with a website offering to sell it for USD 99,999, the Respondent has failed to create a bona fide offering of goods or services under the Policy and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy. To the Complaint’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Specifically, the WhoIs record identifies the registrant of the disputed domain name as “Domain Admin / Whois protection, this company does not own this domain name s.r.o.”, not as “Equifax” or anything similar thereto. This fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy. By using the disputed domain name to redirect visitors to a website to services that compete with the Complainant, the Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. Finally, by using the disputed domain name in connection with a website offering to sell it for USD 99,999, the Respondent clearly is not 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 and, therefore, cannot establish rights or legitimate interests under paragraph 4(c)(iii) of the Policy.

- The disputed domain name was registered and is being used in bad faith. Because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith in violation of the Policy. By using the disputed domain name to redirect visitors to services that compete with the Complainant, the Respondent is clearly creating a likelihood of confusion with the EQUIFAX trademark, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy. In addition, the Respondent is using the disputed domain name in connection with a website offering it for sale for USD 99,999. Clearly, this price is in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name and, therefore, further evidence of bad faith under paragraph 4(b)(i) of the Policy. Another indication of bad faith under the Policy is the fact that the oldest existing registrations for the EQUIFAX trademark were first used and registered 29 years before the Respondent’s registration of the disputed domain name. In addition, the Complainant further amended its Complaint to inform the Panel that the Respondent is a serial cybersquatter who has lost numerous proceedings under the Policy at multiple UDRP service providers since at least 2013.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove 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.

A. Identical or Confusingly Similar

The Annexes 10 and 11 to the Complaint show trademark registrations for EQUIFAX obtained by the Complainant as early as in 1975.

The disputed domain name differs from the Complainant’s trademark EQUIFAX merely by excluding the letter “u” and forming the term “eqifax”, as well as by the addition of the gTLD “.com”.

The misspelling of the Complainant’s trademark is a practice commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking a complainant’s website (See, CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

Also, it is well established that the addition of a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the 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 domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name has been used to redirect Internet users to websites in direct competition with the Complainant.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

Even at the time the disputed domain name was registered, in 2004, the EQUIFAX trademark was already registered and undoubtedly connected with the Complainant’s services.

Besides the gTLD “.com”, the disputed domain name differs from the Complainant’s mark by merely excluding one of its letter, and specifically the “u”, that is not usually pronounced in the original composition: from “equifax” to “eqifax”.

The term “eqifax” has no dictionary meaning in English and considering the dynamic redirect to which the disputed domain name has been put, the Panel can find no plausible explanation other than Respondent’s intent to benefit from typographical errors by Internet users searching for the Complainant.

Therefore, this Panel is convinced that the Respondent targeted the Complainant’s mark when registering the disputed domain name.

The Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “eqifax” could be a mere coincidence.

Also, the circumstances that (i) the Respondent has not provided any justifications for the registration of the peculiar expression “eqifax”, associated with the evidence that (ii) the disputed domain name has been used in connection with third party websites in competition with the Complainant and that (iii) it has been offered for sale for a price is in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, (iv) the Respondent’s use of a privacy service, as well as (v) with the Respondent’s pattern of conduct of registering domain names including third party’s trademarks (see, e.g., Verisure Sàrl v. Domain Admin Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2021-3604), are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <eqifax.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: February 17, 2022