Equifax Inc. v Bosworth Acres-Debenham

WIPO Case No. D2024-2290

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Bosworth Acres-Debenham

Case No. D2024-2290

1. The Parties

The Complainant is Equifax Inc., United States of America (“United States” or “USA”), represented by The

GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Bosworth Acres-Debenham, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <equifaxai.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 June 4, 2024. On June 5, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On June 5, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2024, 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 June 6, 2024.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on June 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2024. The Respondent sent communications to the Center on June 7, 10, 11 and 28, 2024, of fering to settle with the Complainant. The Complainant replied to those communications on June 10 and 28, 2024. The Respondent did not submit any formal response.

Accordingly, the Center notif ied the Commencement of Panel Appointment process on June 28, 2024.

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The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 2, 2024. The Panel f inds 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 provider of information solutions and human resources business process outsourcing services for businesses, governments, and consumers, originally incorporated under the laws of the State of Georgia (USA) in 1913, dating its predecessor back to 1899.

Among its services, the Complainant of fers a credit reporting service that provides consumers with a summary of their credit history, and certain other information, reported to credit bureaus by lenders and creditors.

The Complainant, in addition to being the registrant of the domain name <equifax.com>, which was created on February 21, 1995, largely used in connection with its primary website, is the owner of the following, amongst 218 others in 56 countries or jurisdictions worldwide (Annex 8 to the Complaint), trademark

registrations:

- United States Trademark Registration No. 1027544 for the service mark EQUIFAX, in class 36, f iled
on March 10, 1975, and registered on December 16, 1975, subsequently renewed;

- United States Trademark Registration No. 1045574 for the service mark EQUIFAX, in class 35, f iled
on July 9, 1975, and registered on August 3, 1976, subsequently renewed; and

- United States Trademark Registration No. 1644585 for the service mark EQUIFAX, in classes 35, 36,
and 42, f iled on February 9, 1990, and registered on May 14, 1991, subsequently renewed.

The disputed domain name was registered on October 9, 2023, and presently resolves to a parked webpage displaying Pay-Per-Click (“PPC”) links.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant asserts to operate or have investments in 24 countries in North America, Central and South America, Europe, and the Asia Pacif ic region, counting with approximately 11,000 people worldwide and being a member of the Standard & Poor’s (S&P) 500 Index, having its common stock traded on the New York Stock Exchange (NYSE) under the symbol EFX.

The Complainant further states that previous panels under the Policy have found that the Complainant has rights in and to the EQUIFAX trademark, having panels stated that: the “Complainant’s trademark EQUIFAX is well-known”. (Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814); the EQUIFAX trademark “enjoy[s] a wide reputation and can be considered as a well-known trademark in the industry.” (Equifax Inc. v. Balticsea LLC, Balcsea LLC, WIPO Case No. D2022-2497); “the notoriety of the Complainant and of its [EQUIFAX] Trade Mark in respect of the wide range of services provided by the Complainant under the [EQUIFAX] Trade Mark” (Equifax Inc. v. Daiyu Shao, WIPO Case No. D2022-0913); “the notoriety of the [EQUIFAX] Mark” (Equifax Inc. v. Rakshita Mercantile Private Limited, WIPO Case No. D2022-1947); and that the “Complainant’s [EQUIFAX] mark is well-known” (Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880).

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According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s EQUIFAX trademark, containing the EQUIFAX trademark in its entirety, simply adding the letters “ai” at the end, what does nothing to alleviate the confusing similarity between the disputed domain name and the Complainant’s trademark.

Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:

(i) 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;

(ii) by using the disputed domain name to redirect Internet users to a PPC or monetized parking page that includes links for services related to the Complainant and/or the EQUIFAX trademark, including “equifax f ree credit report,” “free credit report,” and “experian credit report” (Annex 7 to the Complaint), the Respondent has failed to create a bona fide offering of goods or services under the Policy, or a legitimate noncommercial or fair use of the disputed domain name; and

(iii) 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.

Furthermore, the Complainant points out that given that the EQUIFAX trademark is a famous trademark, protected by 221 registrations in 56 countries or jurisdictions worldwide, it is implausible that the Respondent was unaware of the Complainant when registering the disputed domain name. Also according to the

Complainant, given the fame of the Complainant’s trademark, there was opportunistic bad faith on the Respondent’s side when registering the disputed domain name. As to the use of the disputed domain name in bad faith the Complainant contends that using a domain name in connection with a monetized parking page under the circumstances present here (Annex 7) constitutes bad faith, and the impossibility to identify any good faith use to which the disputed domain name may be put.

B. Respondent

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

On June 7, 2024 the Respondent sent a f irst informal message to the Center inquiring as to which website the Center’s message referred to, followed by a second message, on that same date, stating that he had purchased the disputed domain name because it was available and “did not see any issue with buying it, as the company name “Equifax” does not include “AI” as well as declaring that he did not intend to inf ringe on any trademarks or cause any issues and indicating that he was open to transferring the disputed domain name “for a reasonable fee to cover my initial costs incurred when purchasing the domain”. Later, on that same day, a third message was sent by the Respondent indicating the amount of USD 2,500.00 for the transfer of the disputed domain name.

On June 10, 2024 the Respondent reduced the amount to USD 1,750.00 given the Complainant’s rejection to settle, reiterating said of fer on June 11, 2024 and June 28, 2024.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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.

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The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other letters “a” and “i” may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, and according to the evidence submitted, the Complainant has made a prima facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and neither has the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trademark in any manner.

Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the Complainant that could be inferred from

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the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with
the Panel’s f inding of the absence of rights or legitimate interests.

Furthermore, the disputed domain name incorporates the EQUIFAX trademark with the term “ai” which can be relevant to the Complainant’s activities, such composition leads to the suggestion of an endorsement by the Complainant as Internet users could expect services of the Complainant related to artif icial intelligence.

Therefore, the Respondent’s use of the disputed domain name cannot be considered fair as it carries a risk of implied af f iliation with the Complainant.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The registration and use of the disputed domain name in bad faith are further corroborated in the present case in view of the following circumstances:

(i) the composition of the disputed domain name including the term “ai” preceded by the EQUIFAX

trademark , the well-known nature of the Complainant’s trademark and the confusing similarity between the
disputed domain name and said trademark indicate that the Respondent is most likely to have the
Complainant and its trademark in mind when registering the disputed domain name;

(ii) the disputed domain name has been used in connection with a parked webpage displaying PPC links

related to the credit reporting services of fered by the Complainant and likely generating revenues to the
Respondent;

(iii) the of fer of the disputed domain name for sums (USD 2,500.00 and later USD 1,750.00) which far exceed the costs involved in registering the disputed domain name; and

(iv) the implausibility as to any good faith use to which the disputed domain name (entirely incorporating a famous mark) may be put.

For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.

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 <equifaxai.com> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: July 8, 2024