Equifax Inc. v Domain Administrator, Fundacion Privacy Services LTD

WIPO Case No. D2022-2343

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2022-2343

1. The Parties

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

GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <esquifax.com> is registered with Media Elite Holdings Limited dba Register

Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2022. connection with the disputed domain name. On July 1, 2022, the Registrar 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 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 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2022.

The Center appointed James Wang as the sole panelist in this matter on July 27, 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.

page 2

4. Factual Background

The Complainant is a global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers.

The Complainant is a member of Standard & Poor’s 500 Index, and its common stock is traded on the New

York Stock Exchange under the symbol EFX.

The Complainant employs approximately 13,000 people in 25 countries.

The Complainant’s registrations for the EQUIFAX trademark in the United States include the following:

- Reg. No. 1027544 (first used in commerce on March 4, 1975; registered on December 16, 1975) for use in connection with “insurance risk information reporting services concerning potential policy holders.”

- Reg. No. 1045574 (first used in commerce on March 4, 1975; registered on August 3, 1976) for use in

connection with “conducting investigations and reporting on individuals and firms concerning credit,
character and finances in connection with insurance, credit, employment, and claims reporting services.”

- Reg. No. 1644585 (first used in commerce on March 4, 1975; registered on May 14, 1991) 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.”

The Complainant is the registrant of the domain name <equifax.com>, which was registered on February 21,
1995.

The disputed domain name was registered on September 30, 2008. The disputed domain name redirects visitors to a website for TransUnion, a direct competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is identical or confusingly similar to the EQUIFAX trademark in which the
Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to create a bona fide offering of goods or services, has never been commonly known by the disputed domain name, and has never acquired any trademark or service mark in the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

The Complainant requested that the disputed domain name be transferred to the Complainant.

B. Respondent

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

page 3

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the registrant of multiple EQUIFAX trademark registrations in the United States.

The disputed domain name incorporates the entirety of the EQUIFAX trademark, simply adding the letter “s” between the letters “e” and “q” in the trademark. As the disputed domain name contains sufficiently recognizable aspects of the EQUIFAX trademark, the letter “s” added into the disputed domain name does not prevent a finding of confusing similarity to the Complainant’s EQUIFAX trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

According to the Complaint, the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s EQUIFAX trademark in any manner. Nor has the Respondent been commonly known by the disputed domain name, or acquired any trademark or service mark in the disputed domain name. The Respondent submitted no response to these allegations of the Complainant.

Moreover, a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests. See WIPO Overview 3.0, section 2.5.3. It appears from the evidence provided by the Complainant that the disputed domain name redirects visitors to a website for

TransUnion, a direct competitor of the Complainant. Therefore, this use of the disputed domain name by the
Respondent points to their lack of rights or legitimate interests.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Complainant has provided evidence that the Complainant and its EQUIFAX trademark are well known worldwide.

page 4

Given the high reputation and the distinctive nature of the Complainant’s trademark EQUIFAX, it would be inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark at the time of the registration. Moreover, the typosquatting nature of the disputed domain name itself is suggestive of the Respondent’s awareness of and intent to target the Complainant. The Panel therefore agrees with the Complainant’s contention that the disputed domain name was registered in bad faith.

As mentioned, the Complainant has also provided evidence that the disputed domain name redirects visitors
to a website for TransUnion, a direct competitor of the Complainant. As such, the Panel agrees with the
Complainant that the Respondent is clearly creating a likelihood of confusion with the EQUIFAX trademark
and that the Respondent is using the disputed domain name in bad faith. See WIPO Overview 3.0, section

3.1.4.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(iii) of the Policy.

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 <esquifax.com> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: August 10, 2022