WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equifax Inc. v. Nicole Van Leeuwestyn, VAN LEEUWESTYN, NICOLE MAREE
Case No. DAU2016-0048
1. The Parties
The Complainant is Equifax Inc. of Atlanta, Georgia, United States of America ("United States"), represented by FB Rice, Australia.
The Respondent is Nicole Van Leeuwestyn, VAN LEEUWESTYN, and NICOLE MAREE of Surfers Paradise, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <equifaxscore.com.au> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2016. On November 28, 2016, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On November 29, 2016, NetRegistryPty Ltd. 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 .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2016. The Center received an informal email communication from the Respondent on December 24, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on December 29, 2016. 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 one of the largest and oldest consumer credit reporting agencies in the United States of America and has operations or investments in in 24 countries in North America, Central and South America, Europe and the Asia Pacific region. The Complainant organizes, assimilates and analyses data on more than 800 million consumers and more than 88 million businesses worldwide, and its database includes employee data contributed from more than 5,000 employers. Equifax currently employs around 9,200 employees worldwide, approximately 733 of whom are employed in Australia by its wholly-owned subsidiary Veda Group Limited. The Complainant owns the Australian registered trade mark 760084 for EQUIFAX which was registered on April 17, 1998. It also owns the domain name <equifax.com>.
The disputed domain name was registered on October 21, 2015.
5. Parties' Contentions
The Complainant submits that it owns an Australian registered trade mark for its EQUIFAX mark as noted above together with corresponding trade mark registrations in numerous jurisdictions throughout the world.
The Complainant submits that the Respondent is not commonly known as "Equifax" and has not made any use of the disputed domain name in connection with any bona fide offering of goods or services and neither has it made a noncommercial use of the disputed domain name. Nor says the Complainant has the Respondent made any demonstrable preparations to use the disputed domain name in connection with an offering of goods or services in Australia and says that its webpages at the disputed domain name simply indicate that it is a parked domain name. The Complainant further confirms that the Respondent has no registered trade mark, business or company name that incorporates the "Equifax" mark. The Complainant notes that the ABN that is listed in connection with the Respondent's details for the domain <equifaxscore.com.au> corresponds to the business name Nicole Maree Van Leeuwestyn and has been registered since January 1, 2006.
The Complainant notes that the Respondent's husband held an executive role in one of the Complainant's subsidiary companies and that the disputed domain name was registered by the Respondent just prior to the time that her husband became the Managing Director of a joint venture company partly owned by the Complainant's corporate group and just prior to a major acquisition announcement by the Complainant. Subsequently the Respondent's husband left the Complainant's corporate group and the Intellectual Property Counsel for the Complainant then made the initial contact with the Respondent asking the Respondent to explain the nature of her association (if any) with the Complainant and the basis of her right to a domain name containing the word "equifax". The Respondent indicated that having expended costs on the business that she would be prepared to transfer the disputed domain name for AUD 25,000. The Complainant submits that the amount requested for the transfer of the disputed domain name vastly exceeds any amounts incurred by the Respondent as out-of-pocket expenses directly related to its acquisition and that in the circumstances of the Respondent's husband's position, and the subsequent commercial acquisition by the Complainant, that she sought to profit from sale of the disputed domain name to the Complainant. This says the Complainant is indicative of the Respondent's bad faith registration and use under the Policy in terms of paragraph 4(b)(ii) of the Policy.
The Complainant also submits that the Respondent's lack of any use of the disputed domain name combined with the evidence of the intention to sell it for an amount well in excess of the Respondent's out-of-pocket expenses is evidence of bad faith (paragraph 4(b)(i) of the Policy.
The Respondent did not file a response, however the Respondent's husband sent an email to the Center suggesting that he had not received prior written notification and was confused as to the process.
6. Discussion and Findings
The Panel is satisfied that notice of the complaint was sent to the Respondent by email and courier in accordance with the Rules and therefore that the Respondent was appropriately notified of the proceedings.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns the Australian registered trade mark 760084 for EQUIFAX which was registered on April 17, 1998. The disputed domain name wholly contains the Complainant's EQUIFAX mark together with the common English word "score". The EQUIFAX mark is a coined term and is the distinctive element in the disputed domain name. The addition of the word "score" does not distinguish the disputed domain name from the Complainant's EQUIFAX mark and as a result the Panel finds that the disputed domain name is confusingly similar to the Complainant's EQUIFAX mark and the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not commonly known as "Equifax" and has not made any use of the disputed domain name in connection with any bona fide offering of goods or services and has not made a noncommercial use of the disputed domain name. The Complainant further confirms that the Respondent has no registered trade mark, business or company name that incorporates the "Equifax" mark and that the Complainant has not authorised the Respondent's use of its EQUIFAX mark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent. For this reason and also for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
It is apparent that by the time that the disputed domain name was registered in 2015 that the Complainant had been using its EQUIFAX mark in Australia for many years. In view of the Respondent's husband's former employment with the Complainant's corporate group it appears to the Panel that the Respondent must have been aware of the Complainant's use and interest in the EQUIFAX mark when she registered the disputed domain name. In the circumstances where the Respondent has submitted no explanation for her registration of the disputed domain name or for the timing of the registration prior to a major acquisition announcement by the Complainant, the overwhelming inference is that the Respondent registered the disputed domain name for her own purposes and in order to profit from it, which amounts to registration in bad faith.
The Respondent's response to the cease-and-desist letter sent by the Complainant's in-house lawyer was to demand the sum of AUD 25,000 for transfer of the disputed domain name. This sum is much more than the Respondent's administrative costs incurred in registering the disputed domain name and there is no evidence to suggest that she operates or has developed a business using the disputed domain name such that any additional costs might be justified. This conduct reinforces the inference that the disputed domain name was registered by the Respondent in bad faith.
Paragraph 4(b)(i) of the Policy deems there to be evidence of registration and use in bad faith where there is evidence suggesting that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In all of the circumstances, as noted above, the Panel finds that it is more than likely that the Respondent registered the disputed domain name in order to profit from it and her request for transfer consideration of AUD 25,000 considerably exceeds her likely acquisition costs and represents a substantial windfall. As a result the Panel finds that the Respondent registered or used the disputed domain name in bad faith and therefore the Complaint also succeeds under this element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <equifaxscore.com.au> be transferred to the Complainant.
Date: January 10, 2016