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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Whois Privacy, Private by Design, LLC / Damien Surray

Case No. D2021-2748

1. The Parties

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

Respondent is Whois Privacy, Private by Design, LLC, United States / Damien Surray, United States.

2. The Domain Name and Registrar

The disputed domain name <equifaxincorporation.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 Complainant on August 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 26, 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 Respondent of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2021.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 22, 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

Complainant, a global provider of information solutions, human resources services, and other business services as well as a consumer credit reporting service, was incorporated in the state of Georgia in the United States in 1913, with a business history dating back to 1899. Complainant, which has about 11,000 employees worldwide, maintains its headquarters in Atlanta, Georgia in the United States and operates or has investments in 24 countries. Complainant is a member of Standard & Poor’s 500 Index and is traded on the New York Stock Exchange under the symbol EFX.

Complainant owns at least 221 trademark registrations in at least 56 jurisdictions for marks that consist of or contain the term “equifax,” which has been in use since 1975 (46 years). Some of Complainant’s trademark registrations in the United States are:

- EQUIFAX, U.S. Reg. No. 1,027,544, registered on December 16, 1975;
- EQUIFAX, U.S. Reg. No. 1,045,574, registered on August 3, 1976; and
- EQUIFAX, U.S. Reg. No. 1,644,585, registered on May 14, 1991.

Complainant owns a registration for the <equifax.com> domain name, which it registered on February 21, 1995, and which it uses in connection with its primary website.

The disputed domain name was registered on July 8, 2021. At the time the Complaint was filed and currently, the disputed domain name redirects to Complainant’s “www.equifax.com” website.

5. Parties’ Contentions

A. Complainant

According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s EQUIFAX trademark in which Complainant has rights as demonstrated through its cited registrations. Complainant asserts that the disputed domain name incorporates the EQUIFAX trademark in its entirety and that the addition of a descriptive term to Complainant’s trademark, namely “incorporation,” does not eliminate the confusing similarity. Complainant cites previous panel decisions that have found that the addition of the word “incorporation” or “incorporated” to a complainant’s trademark is confusingly similar to a complainant’s trademark. Complainant also contends that the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing confusing similarity.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has never been assigned, licensed, or otherwise authorized to use Complainant’s EQUIFAX mark and that there is no relationship between Complainant and Respondent. Complainant also states that Complainant is not aware of any bona fide offering of goods or services by Respondent in connection with the disputed domain name, and cites that prior panels have found that use of a disputed domain name to redirect to a complainant’s own website does not constitute a bona fide offering, nor does such a redirect constitute a legitimate noncommercial or fair use. Complainant advises that, according to Complainant’s knowledge, Respondent has never been known by the disputed domain name and does not have any trademark rights in the disputed domain name. Accordingly, Complainant asserts that Respondent has not met any criteria for demonstrating rights or legitimate interests in the disputed domain name.

Complainant advises that, due to its at least 221 trademark registrations in 56 jurisdictions, the oldest of which was registered 46 years ago, as well as the registration of Complainant’s <equifax.com> domain name in 1995, the EQUIFAX mark should be considered famous or widely known, and that it is thus not possible that Respondent was not aware of Complainant. Complainant asserts that Respondent’s registration of the disputed domain name constitutes “opportunistic bad faith”. Complainant cites that prior UDRP panels have found that a respondent’s redirection of a disputed domain name to a complainant’s own website constitutes bad faith and demonstrates a desire to disrupt a complainant’s business and/or create consumer confusion. Complainant states that active MX records are associated with the disputed domain name, demonstrating that Respondent has the ability to send emails using email addresses that contain Complainant’s EQUIFAX trademark, and that prior panels have found that the existence of such records is evidence of bad faith. For all of these reasons, Complainant contends that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.

A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel AccoViews on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns numerous registrations for the EQUIFAX trademark, as referenced above. Therefore, Complainant has established that it has rights in the EQUIFAX trademark.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

Here, the disputed domain name incorporates the EQUIFAX trademark in its entirety, with the addition of the word “incorporation” after the term “equifax”. This variation does not prevent a finding of confusing similarity between the disputed domain name from and the mark. See Covanta Energy Corporation v. Domains By Proxy, LLC / Peter Allen, Covantaholdingcorporation, WIPO Case No. D2018-0285.

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its EQUIFAX mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, 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 it has acquired no trade mark 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 trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Respondent is using the disputed domain name to redirect to Complainant’s own website, “www.equifax.com”. Prior UDRP panels have found that redirecting a disputed domain name to a complainant’s own website does not constitute a bona fide offering and does not show rights or legitimate interests in the disputed domain name. See The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153.

Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the EQUIFAX trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the EQUIFAX trademark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, noting that Complainant’s business name is “Equifax Inc.”, where “Inc.” is an abbreviation for “incorporation”, the disputed domain name’s construction reinforces the Panel’s view that Respondent was likely aware of Complainant at the time registering the disputed domain name.

Respondent is currently using the disputed domain name to redirect to Complainant’s own website, “www.equifax.com”. Prior UDRP panels have found that such a use constitutes bad faith, because at any time the disputed domain name may be redirected elsewhere or may cause consumer confusion. See Mandarin Oriental Services B.V. v. Whois Agent, Domain Protection Services, Inc. / Domain Administrator, Matama, WIPO Case No. D2017-0615.

The disputed domain name is also associated with MX records, demonstrating that Respondent has the ability to send from and receive email communications to the disputed domain name. Prior UDRP panels have found the association of MX records with a disputed domain name to be evidence of use in bad faith. See Swiss Re Ltd v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1549.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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, <equifaxincorporation.com>, be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: October 6, 2021

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