Equifax Inc. v Domain Admin, Whois Privacy Corp / Domain Admin

WIPO Case No. D2022-2100

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Domain Admin, Whois Privacy Corp / Domain Admin

Case No. D2022-2100

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 Domain Admin, Whois Privacy Corp., Bahamas / Domain Admin, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <equifaxcredit.com> is registered with Internet Domain Service BS Corp

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2022. connection with the disputed domain name. On June 14, 2022, 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 June 14, 2022, 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 15, 2022

The Center verified that the Complaint together with the amended 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 June 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2022.

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The Center appointed Frank Schoneveld as the sole panelist in this matter on August 4, 2022. 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 owns over 220 trademark registrations in more than 50 jurisdictions around the world for trademarks that consist of or contain the word “Equifax” which was first registered as a trademark in 1975. The Complainant’s registered trademarks include:

Trademark Registration Date Registration Jurisdiction Description

No.

EQUIFAX	December 16, 1975	1027544	USA	For “insurance risk information reporting services concerning potential policy holders”.
EQUIFAX	February 24, 1978	212564	Mexico	For “… credit reporting services, marketing research services, commercial reporting services in general”.
EQUIFAX	May 14, 1991	1644585	USA	For use in connection with, inter alia, “providing on-line access to computer databases containing information relating to applicants for insurance, credit, mortgage
loans, and employment”.
EQUIFAX	October 5, 1999	820002089	Brazil	For “Providing credit application processing; credit inquiry and consulting services;…”
EQUIFAX	November 7, 2002	1955419	China	For “Credit information services, namely providing credit information relating to consumer or commercial applications for credit, …; providing credit application processing; credit inquiry and consulting services;”
EQUIFAX	March 18, 2008	TMA709767	Canada	For “Credit monitoring services
CREDIT	which include alerts of key
WATCH	changes to credit information,
providing credit reports, and insuring against identity theft”.
EQUIFAX	June 10, 2009	6979306	European	For “Commercial information
Union	agency services for businesses in
the areas of … credit information; … credit information services…”

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The disputed domain name was created on July 27, 2018 more than 40 years after the Complainant registered its EQUIFAX trademark in the USA and 23 years after the Complainant registered its domain name <equifax.com>. The Complainant is a member of Standard & Poor’s (S&P) 500 Index, and its common stock is traded on the New York Stock Exchange (NYSE) under the symbol EFX.

The disputed domain name resolves to a webpage that includes links for services described as “Credit

Report Company”, “Credit Card Deals” and “Instant Approval Cards”.

5. Parties’ Contentions

A. Complainant

The Complainant submits it is a leading global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers, was originally incorporated in the USA in 1913, is headquartered in Atlanta, Georgia (USA), and operates or has investments in 24 countries in North America, Central and South America, Europe and the Asia Pacific region employing approximately 11,000 people worldwide. Amongst other services, the Complainant says that it offers 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 says that it uses the domain name <equifax.com> in connection with its primary website and has prevailed in numerous proceedings under various domain name disputes involving names that are identical or confusingly similar to its EQUIFAX Trademark giving nine examples of such disputes. The

Complainant provides a copy of the webpage to which the disputed domain name resolves, contending that this shows the Respondent uses the disputed domain name in connection with a pay-per-click (“PPC”) or monetized parking page that includes links for services related to the EQUIFAX Trademark, including “Credit Report Company”, “Instant Approval Cards” and “Credit Report”.

The Complainant submits that it owns over 220 trademark registrations in at least 56 jurisdictions around the world for marks that consist of or contain the word “Equifax,” which it submits was first used in commerce and registered in 1975, and providing a list of these trademarks. The Complainant states that previous panels under the Policy have found that the Complainant has rights in and to the EQUIFAX trademark, and in one case, a panel said that the Complainant “clearly has rights in the EQUIFAX Trademark for the purposes of the Policy” (citing, Equifax Inc. v. WhoisGuard, Inc. / Dress Rwesss, WIPO Case No. D2018-2309).

WIPO Overview 3.0, section 1.7 in this context.

The Complainant asserts that the generic Top-Level domain (“gTLD”) “.com” is viewed as a standard contends) describes services associated with the EQUIFAX trademark. The Complainant contends that in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP and refers to
registration requirement and as such is disregarded under the confusing similarity test, referring to WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section

1.11.1. The Complainant states that the second-level portion of the disputed domain name contains the

The Complainant contends that the second-level portion of the Disputed Domain Name contains the
Complainant’s EQUIFAX trademark in its entirety, adding the word “credit” and where a disputed domain
name contains a complainant’s trademark plus another word, the disputed domain name is confusingly similar
to the trademark (referring to section 1.8 of WIPO Overview 3.0) and noting that previous panels have found
that domain names containing the EQUIFAX trademark plus the word “credit” are confusingly similar to the
EQUIFAX Trademark citing some examples including Equifax Inc. v. Domain Administrator, China Capital
Investment Limited, WIPO Case No. D2017-1880 (regarding the domain names
<equifaxcreditbreach2017.com>, <equifaxcreditsecurity2017.com>, and <equifaxcredit2017.com>).

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The Complainant contends that the overall impression of the designation of the disputed domain name is
one of being connected to the trademark of the Complainant and that the addition of a word does not change
the overall impression of the designation. Complainant concludes that the Panel should find that the
disputed domain name is identical or confusingly similar to the EQUIFAX trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that (a) it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX Trademark in any manner, and (b) by using the disputed domain name in connection with a pay-per-click page that includes links for services related to

the EQUIFAX trademark, including “Credit Report Company”, “Instant Approval Cards” and “Credit Report”,
the Respondent has failed to create a bona fide offering of goods or services under the Policy – and,
therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the
Policy.

The Complainant submits that, to the Complainant’s knowledge, 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, and therefore the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. The Complainant notes that (a) the WhoIs record identifies the registrant of the disputed domain name as “Domain Admin, Whois Privacy Corp.”, not as “Equifax Credit” or anything similar thereto, and this fact, combined with the lack of evidence in the record to suggest otherwise, allows the Panel to rule that the Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to paragraph 4(c)(ii) of the Policy, and that (b) given the Complainant’s use of the EQUIFAX trademark for 47 years it is impossible that the Respondent is commonly known by this trademark.

The Complainant asserts that by using the disputed domain name in connection with a monetized parking page, the Respondent’s actions are clearly commercial and, therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy, and that a parking website containing sponsored links cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant’s goodwill by misleading Internet users to its website.

The Complainant submits that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent. The Complainant contends, citing WIPO Overview 3.0, section 3.1.4., that the mere registration of a domain name that is identical or confusingly similar to a famous or

widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith, contending and accordingly the only explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be simply (a) to disrupt the Complainant’s relationship with its customers or potential customers or (b) to attempt to attract Internet users for potential gain, both of which constitute evidence of registration and use in bad faith. The Complainant argues that given the global reach and popularity of the Complainant’s services under the EQUIFAX trademark as well as the disputed domain name’s similarity to the Complainant’s own domain name <equifax.com> it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business.
that the EQUIFAX trademark is clearly famous and/or widely known, given that it is protected by at least 221
trademark registrations in at least 56 jurisdictions worldwide, the oldest of which was used and registered 47
years ago. The Complainant further contends that it is implausible that the Respondent was unaware of the

The Complainant contends that because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith in violation of the Policy, submitting that in light of the long history of the Complainant’s trademarks and the Complainant’s significant presence and brand recognition it is likely that the Respondent knew of the Complainant’s trademark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion. The Complainant also contends that Panels have repeatedly held that using a domain name in connection with a monetized parking page under the circumstances present here constitutes bad faith since webpages of the type used

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by the Respondent in connection with the disputed domain name – sometimes known as an “online domain
monetization system”, a “monetized parking page” or a “paid link farm service” – have become an
increasingly popular way for domain name registrants to profit from their activity with little effort, and given
the lack of any indication that the websites are not associated with the Complainant, it is likely that a website
visitor would be led to such website, or make decisions once he or she has arrived at such website, based
on a mistaken belief that the Complainant is the source of the website or that the Complainant has
sponsored, is affiliated with or has endorsed the website – a result that constitutes bad faith under
paragraph 4(b)(iv) of the Policy.

The Complainant contends that bad faith exists even if the Respondent should (incredibly) argue that it was unaware of the monetized parking page associated with the disputed domain name, citing WIPO Overview 3.0, section 3, which states that: “Particularly with respect to ‘automatically’ generated pay-per-click links,

panels have held that a respondent cannot disclaim responsibility for content appearing on the website
associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate
interests). Neither the fact that such links are generated by a third party such as a registrar or auction
platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself
prevent a finding of bad faith.”

The Complainant also submits that another indication of bad faith under the Policy is the fact that the oldest existing registrations for its EQUIFAX trademark were first used and registered 43 years before the Respondent’s registration of the disputed domain name, and that the near instantaneous and global reach of the Internet and search engines, particularly in circumstances where the complainant’s mark is widely known (including in its sector) the Respondent cannot credibly claim to have been unaware of the trademark (particularly in the case of domainers), panels have been prepared to infer that a respondent knew, or have found that a respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark and accordingly, the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements is present:

(i)        the 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 domain name; and

(iii)      the domain name has been registered and is being used in bad faith.

The Rules at paragraph 15(a) require that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In the absence of any reply by the Respondent or any rebuttal of the Complainant’s assertions, the Panel proceeds on the basis of the Complaint as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the holder of the ‘EQUIFAX’ trademark registered internationally, including in the United States, Canada, China, European Union, Brazil and more than 40

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other jurisdictions worldwide as well as the holder of the ‘EQUIFAX CREDIT WATCH’ trademark registered

in Canada. This shows that the Complainant has rights in such registered trademarks.

It is clear that the disputed domain name contains the word “equifax” which forms the main part of the as the Complainant’s registered trademarks EQUIFAX and EQUIFAX CREDIT WATCH.

disputed domain name. The disputed domain name includes exactly the same spelling as the Complainant’s
EQUIFAX trademark and adds the word “credit”, and is also exactly the same as the trademark EQUIFAX

In the Panel’s view the gTLD “.com” in the disputed domain name does not affect the disputed domain name for the purpose of determining whether it is confusingly similar to the Complainant’s trademarks. In view of the above, and absent any submission of the Respondent, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks EQUIFAX and EQUIFAX CREDIT WATCH, in which the Complainant has rights.

B. Rights or Legitimate Interests

In accordance with the Policy, while it can be notoriously difficult to prove a negative, it should be remembered that it is the Complainant who must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The evidence provided by the Complainant suggests that the EQUIFAX trademark is widely recognized internationally in business circles and the Panel accepts that it is well known around the world, at least in respect of commercial and business services. There is also evidence that:

(i)        the Respondent has no relationship, and is not affiliated, with the Complainant in any way;

(ii) the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the
Respondent to register or to use any domain name incorporating the Complainant’s EQUIFAX or EQUIFAX
CREDIT WATCH trademarks;

(iii)      the Complainant’s trademark EQUIFAX is well known internationally, at least in business circles, and

(iv)      registration of the EQUIFAX trademark preceded the registration of the disputed domain name by more

than 40 years.

The prominent use in the disputed domain name of the Complainant’s trademark, would generally indicate that the Respondent has a right to use this mark in the disputed domain name or that the disputed domain name is somehow associated with the Respondent. However, there is no evidence of any legitimate interest

or rights in the disputed domain name. At the same time, the Complainant makes it very clear that it has
never acquiesced in, or given the Respondent permission, to use its EQUIFAX trademark and that its use in
the disputed domain name without the Complainant’s permission violates the Complainant’s rights in the

EQUIFAX and EQUIFAX CREDIT WATCH trademarks.

The Panel notes also, that the Respondent’s name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

There is no evidence of any actual or contemplated bona fide or legitimate use of the disputed domain name, and the Respondent shows no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The use of the disputed domain name to provide click through connection to services competing with the Complainant’s services that use the EQUIFAX trademark, indicates an illegitimate use and cannot be considered use indicating the Respondent has rights or legitimate interests in respect of the disputed domain name.

All the above mentioned circumstances indicate that it is more likely than not that the Respondent has no rights or legitimate interest in the disputed domain name, and in the absence of any evidence or submission to the contrary, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.

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C. Registered and Used in Bad Faith

Given that the Complainant’s EQUIFAX and EQUIFAX CREDIT WATCH trademarks have significant
recognition internationally, and given the ease with which the Respondent could have made a simple search
using an Internet search engine to determine if registration of the disputed domain name might infringe the
rights of a trademark holder such as the Complainant, the Panel accepts that it is implausible the
Respondent did not know of the Complainant’s trademarks when registering the disputed domain name. In
knowingly registering and using the disputed domain name that prominently included the Complainant’s
EQUIFAX and EQUIFAX CREDIT WATCH trademarks, the most likely reason to do so was to attract Internet
users for potential gain knowing that Internet users would likely mistakenly assume that the disputed domain
name and the linked services (some competing with services supplied by the Complainant) at the webpage
to which the disputed domain name resolved, were associated with, endorsed or sponsored by, the
Complainant.

In registering and using the disputed domain name the Panel finds that it is more likely than not that the Respondent knew of the Complainant’s EQUIFAX and EQUIFAX CREDIT WATCH trademarks, and has sought to obtain a commercial benefit by attracting Internet users mistakenly confused that the disputed domain name, and services offered through it, were associated, sponsored or endorsed by the Complainant.

The Panel finds that, based on that confusion, through pay-per-click links at the webpage to which the
disputed domain name resolved, the Respondent has obtained commercial gain by trading off the
Complainant’s trademarks, and to the potential commercial detriment of the Complainant.

In view of all the above, and in the absence of any submission from the Respondent, the Panel finds that the disputed domain name has been 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, <equifaxcredit.com>, be transferred to the Complainant.

/Frank Schoneveld/
Frank Schoneveld
Sole Panelist
Date: August 19, 2022