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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-2375

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwi2verify.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 26, 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 27, 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 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on August 23, 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 is a publicly traded company with its headquarters in Atlanta, Georgia, United States. It was incorporated in 1913 and is an international provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers. It operates, or has investments, in 24 countries.

On March 24, 2021, the Complainant acquired a business, i2verify, which provides employment verification services and which uses the domain name <i2verify.com> in connection with the provision of those services. On the same date, the Complainant issued a press release announcing its acquisition. On July 9, 2021, the Complainant applied for a service mark in the United States, application number 90819468, for I2VERIFY in classes 35 and 42.

The disputed domain name was registered on May 11, 2021. Its use alternates between resolving to a parking page containing pay-per-click (“PPC”) links, including links for “Checks”, “Email Verification Service” and “Account Verification”, and redirecting to a third party website which encourages Internet users to install a suspicious web browser extension.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The i2verify business has used the trade mark I2VERIFY since at least January 2013 in connection with the provision of employment verification and related services and the Complainant continues to use the mark for the same services.

In addition to the Complainant’s application for a service mark for I2VERIFY, the Complainant has acquired common law trade mark rights in the I2VERIFY trade mark as a result of the mark’s widespread and continuous use in commerce in the United States since at least January 2013. As at the date of the Complainant’s acquisition of i2verify on March 24, 2021, the company generated USD 5.2 million in annual revenue and had 15 employees, who served 75 clients. The I2VERIFY trade mark has featured in news articles and website pages over a period of several years. These include a claim made on i2verify’s website in December 2014 that its services were “Trusted by Over 500,000 Employees and their Employers” and a further claim on its website, in August 2018, that i2verify was “the leading solution” among employment verification providers. Furthermore, various entities and institutions have stated on their websites that they use its services. Finally, a Google search for “i2verify” returns results that exclusively relate to the i2verify business now owned by the Complainant.

The Top Level Domain (“TLD”) “.com” is viewed as a standard registration requirement and, as such, is disregarded for the purpose of undertaking the comparison under the first element. The disputed domain name contains the letters “www” followed by the Complainant’s I2VERIFY trade mark in its entirety. The incorporation of these additional letters suggests typo-squatting (see Caterpillar Inc. v. zhang zhicai and li li, WIPO Case No. D2012-1849) and does not avoid confusing similarity between the Complainant’s mark and the disputed domain name. Furthermore, the overall impression of the designation of the disputed domain name is one of being connected with the Complainant’s trade mark; see L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437.

The Complainant says also that 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 its I2VERIFY trade mark. By including commercial links to third-party websites on the website associated with the disputed domain name the Respondent has failed to create a bona fide offering of goods and services. Similarly, use of the disputed domain name to direct to a website which attempts to trick Internet users into installing a suspicious web browser extension does not comprise a bona fide offering of goods and services. To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trade mark or service mark rights in it. Additionally, the uses which the Respondent has made of the disputed domain name are commercial in character and do not constitute a legitimate noncommercial or fair use of it.

The Complainant says also that the disputed domain name was registered and is being used in bad faith. The similarities between the disputed domain name and the Complainant’s domain name, <i2verify.com>, which was registered more than nine years prior to the Respondent’s registration of the disputed domain name, are such that it is inconceivable that the Respondent was unaware of the Complainant’s activities and the trade mark under which it was conducting its business as at the date of registration of the disputed domain name. Moreover, because the disputed domain name is so obviously connected with the Complainant, its registration suggests opportunistic bad faith on the part of the Respondent. Indeed, as the Respondent registered the disputed domain name only 48 days after the Complainant announced its acquisition of the i2Verify business, its timing is indicative of bad faith; see Amazon.com, Inc., Amazon Technologies, Inc. v. Paul James, WIPO Case No. D2014-1847.

Earlier UDRP panels have repeatedly held that using a domain name in connection with a monetized parking page under the circumstances present in these proceedings constitutes bad faith. Further, the Respondent’s use of the disputed domain name in connection with a website which attempts to trick Internet users into installing a suspicious website browser extension constitutes bad faith because, among other things, it disrupts the business of a competitor and intentionally attempts to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. Finally, registering and using a domain name that consists solely of the letters “www”, followed by the Complainant’s I2VERIFY trade mark is indicative of bad faith; see JCB Co., Ltd. v. Wen Tao, 111, WIPO Case No. D2020-3212. There appears to be no plausible reason for the Respondent to have registered the disputed domain name other than to take advantage of Internet users who mistype the Complainant’s website address.

Lastly, following disclosure by the Registrar of the details of the underlying registrant, it is now apparent that the personal-named Respondent, Carolina Rodrigues, has a long history of cybersquatting and has lost numerous decisions under the Policy, having been a respondent in 373 separate proceedings under the Policy. Bad faith should therefore be found on the additional basis set out at paragraph 4(b)(ii) of the Policy, namely that the Respondent has engaged in a pattern of such conduct.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant does not have a registered trade mark for I2VERIFY, the mark on which it relies in these proceedings, albeit it has applied for a United States service mark for this mark. However, pending trade mark applications are not considered as comprising trade mark rights for the purposes of the first element of the Policy, which requires the Complainant to demonstrate that such rights are in being as at the time of the filing of the Complaint; see section 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In order successfully to assert common law or unregistered trade mark rights, a complainant needs to demonstrate that its mark “has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”; see section 1.3 of the WIPO Overview 3.0.

The Complainant’s evidence, unchallenged by the Respondent, is that I2VERIFY has been used by i2verify as a trading style since it first engaged in commerce in or around January 2013 and that its domain name, <i2verify.com>, has been used by it for a similar period. As at December 2014, the i2verify website stated that it was trusted by over 500,000 employees and their employers. Other evidence provided by the Complainant includes an article in “HR Technologist” magazine, dated April 2020, recommending i2verify as one option which employers could consider to verify employees as well as evidence from various organizations that i2verify’s services were being used by them to verify the identity of applicants or employees. The totality of the Complainant’s evidence establishes that, by the date of the Complainant’s acquisition of the i2verify business in March 2021, I2VERIFY was known within the sector of the business services market within which it operated as denoting the services provided by i2verify. The Panel accordingly accepts that the Complainant had acquired common law or trade mark rights in I2VERIFY prior to the date of registration of the disputed domain name in May 2021.

As a technical requirement of registration, the TLD (“.com” in the case of the disputed domain name) is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s I2VERIFY mark and the disputed domain name is the additional letters “www”, which precede the mark. This additional component does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s I2VERIFY mark is the dominant component of the disputed domain name and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The fact that the disputed domain name was registered by the Respondent in May 2021, that is less than two months after the Complainant issued a press release relating to its acquisition of i2verify in March 2021, suggests that the registration of the disputed domain name by the Respondent is likely to have been prompted by news of the Complainant’s acquisition. In any event, the distinctive character of the I2VERIFY mark and the confusing similarity of the disputed domain name to it points, on at least a balance of probabilities, to the Respondent having been aware of the existence of the Complainant and its mark as at the date of registration. The disputed domain name was accordingly very probably chosen by the Respondent in order to attract visitors to its website who were searching for the Complainant’s website. Domain names which commence with the letters “www” are particularly apt to have been chosen to capture website traffic which arises from Internet users mistyping a third party’s web address; see JCB Co., Ltd. v. Wen Tao, 111 (supra).

Neither of the uses which the Respondent has made of the disputed domain name comprises a bona fide offering of goods and services. Specifically, use of the disputed domain name to direct Internet users to a directory page containing PPC links does not amount to a bona fide offering of goods and services because the Respondent is using the confusing similarity between the disputed domain name and the Complainant’s I2VERIFY mark in order to attract Internet users to its website; see, for example, MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550. Similarly, whilst the specific technical consequences of installing the web browser extension from the third party website to which the disputed domain name periodically directs are unclear, the Panel agrees with the Complainant that the software appears to be highly questionable and, most likely, facilitates the installation of malware. Use of the disputed domain name in order to redirect to a webpage of this type does not comprise a bona fide offering of goods and services; see, for example, 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043.

The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable as the Respondent’s website is commercial in character. Moreover, the composition of the disputed domain name is such that it carries a significant risk of implied affiliation with the Complainant, which prevents its use from being considered fair; see section 2.5.1 of the WIPO Overview 3.0.

The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does. The Respondent having failed to respond to the Complaint, has self-evidently not satisfied that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As explained above, the relatively short time between the Complainant’s publication of its acquisition of the i2verify business and the registration of the disputed domain name, suggests that the Respondent was aware of the Complainant and its I2VERIFY mark as at the date of registration of the disputed domain name and that it was registered in order to take unfair advantage of the Complainant’s repute in its mark. The confusing similarity between the disputed domain name and the Complainant’s I2VERIFY mark, coupled with the inherent distinctiveness of mark and the uses which the Respondent has made of the disputed domain name following registration, effectively preclude any other finding. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith.”. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The uses to which the Respondent has put the disputed domain name falls within the circumstance described at paragraph 4(b)(iv) of the Policy in that the Respondent is using the fame of the Complainant’s mark in order to attract Internet users to its website who are likely to assume that from the confusing similarity between the disputed domain name and the Complainant’s I2VERIFY mark, that the disputed domain name is connected with the Complainant and its services. The fact that such users would realize, whether on reaching the Respondent’s website or the third party website promoting a dubious web browser extension, that this is not the case is immaterial because, by that point, the Respondent will have gained the opportunity of earning advertising revenue whilst the website is displaying PPC links (see for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491) or the opportunity of distributing malware. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise, and has sought to conceal its identity through use of a privacy service. These factors collectively point to bad faith registration and use of the disputed domain name.

Lastly, paragraph 4(b)(ii) of the Policy provides that bad faith registration and use may be found where a respondent has registered the domain name in order to prevent the complainant from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct. The details provided by the Complainant of earlier proceedings under the Policy in which the individual Respondent has been involved and the consequent findings against her provide further support for a finding of bad faith registration and use.

The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.

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, <wwwi2verify.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: September 8, 2021

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