The Complainant is Equifax Inc., United States of America (“United States” or “U.S.”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Privacy Protection, United States / Golliardo S.A., Seychelles.
The disputed domain name <equifax.xyz> is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2021, 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 July 15, 2021 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 on July 16, 2021.
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 July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. On August 8, 2021, the Respondent sent an email indicating its willingness to settle the dispute. The Complainant in response claimed that it did not wish to pursue a settlement. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on August 10, 2021 that it would proceed to the panel appointment process.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 3, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent.
The Complainant is Equifax Inc., a U.S. company operating in the field of information solutions and human resources business process outsourcing services, and owning several trademark registrations for EQUIFAX, among which the following ones:
- United States Trademark Registration No.1,027,544 for EQUIFAX, registered on December 16, 1975;
- United States Trademark Registration No.1,045,574 for EQUIFAX, registered on August 3, 1976.
The Complainant also operates on the Internet, its official website being “www.equifax.com.”
The Complainant provided evidence in support of the above.
The disputed domain name <equifax.xyz> was registered on June 18, 2021, according to the WhoIs records, and, when the Complaint was filed, it resolved to a webpage of the Registrar in which the disputed domain name was offered for sale for USD 999.
The Complainant states that the disputed domain name <equifax.xyz> is identical to its trademark EQUIFAX, as it fully incorporates its trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark EQUIFAX is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the fact the disputed domain name is on sale for a price in excess of the out-of-pocket costs directly related to the disputed domain name constitutes evidence of the Respondent’s bad faith registration and use of the disputed domain name.
The Respondent has made no formal reply to the Complainant’s contentions.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
In this case, the Respondent submitted an informal email communication on August 8, 2021. In this email, the Respondent stated the following:
“Hi there, EQUIFAX.XYZ domain name are created by our software (which combines generic words together). We didn’t have any clue about any trademarks. Despite the fact that we weren't contacted by the complainer (he created the case without any attempts to contact us) we have no problems with transferring the domain to the complainer. Our only wish is to spend as less time as possible on this matter. So please use below information to transfer the domain and I hope this is last time we need to communicate. Transfer Code: […] Regards, Golliardo”
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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.
According to its email communication of August 8, 2021, the Respondent appears to be willing to reach an agreement for the transfer of the disputed domain name.
Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) considers the following possibilities for the Panel to issue a decision on cases involving a respondent’s informal or unilateral consent for the transfer of the disputed domain name:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
In the present case, the Panel finds appropriate to issue a decision on the merits, noting that the Complainant is not accepting the Respondent’s consent for the transfer and it is entitled to what it has paid for, and considering the way the disputed domain name had been used, consisting in a clear case of cybersquatting, although in its email communication of August 8, 2021 the Respondent appears to disclaim any bad faith.
The Panel finds that the Complainant is the owner of the trademark EQUIFAX both by registration and acquired reputation and that the disputed domain name <equifax.xyz> is identical to the trademark EQUIFAX.
It is well accepted that a generic Top-Level Domain, in this case “.xyz”, may be ignored when assessing the identity or confusing similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain name carries a high risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0., section 2.5.1.
Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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”.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark EQUIFAX in the field of information solutions and human resources business process outsourcing services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name.
The Panel finds that the Respondent’s claim of good faith, by stating that the disputed domain name was created by a software which combines generic words together, is not acceptable as consisting of willful blindness, since a registrant of a domain name has an affirmative obligation to avoid the registration of trademark-abusive domain names, in accordance with paragraph 2(b) of the Policy. See WIPO Overview 3.0., section 3.2.3.
As regards the use in bad faith of the disputed domain name, which redirected to a webpage where it is offered for sale, the Panel considers that bad faith may exist even when registering a domain name for subsequent resale. In the circumstances of this case, the Panel finds that the Respondent’s likely knowledge of the Complainant’s rights, the distinctiveness of the Complainant’s trademark (which is identical to the disputed domain name), and the failure of the Respondent to present a credible evidence-backed rationale for registering the disputed domain name lead the Panel to a finding of bad faith. See WIPO Overview 3.0., section 3.1.1.
The Panel finally finds the Respondent’s offer to sell the disputed domain name for an amount of money that presumably exceeds the out-of-pocket expenses of the Respondent to be further evidence of bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <equifax.xyz> be transferred to the Complainant.
Date: September 6, 2021