Equifax Inc. v Domain Administrator, Fundacion Privacy Services LTD

WIPO Case No. D2022-0699

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

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

Case No. D2022-0699

1. The Parties

The Complainant is Equifax Inc., United States of America (“U.S.”), represented by The GigaLaw Firm,

Douglas M. Isenberg, Attorney at Law, LLC, U.S.

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

2. The Domain Name and Registrar

The disputed domain name <equifaxlogin.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 March 1, 2022. connection with the disputed domain name. On March 6, 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 March 9, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was March 29, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 6, 2022.

The Center appointed Daniel Peña as the sole panelist in this matter on April 6, 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.

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4. Factual Background

The Complainant is a leading global provider of information solutions and human resources business consumers with a summary of their credit history, and certain other information, reported to credit bureaus by lenders and creditors.

process outsourcing services for businesses, governments, and consumers. Among its many services, the

The Complainant was incorporated in the U.S. in 1913, and is headquartered in Atlanta, Georgia. It 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. 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.

The Complainant owns at least 221 trademark registrations in at least 56 jurisdictions around the world for
marks that consist of or contain the word “Equifax,” which was first used in commerce and registered in
1975.

The Complainant has used the EQUIFAX trademark for decades and owns registrations for the EQUIFAX trademark and various EQUIFAX-based marks in the U.S. and in major markets around the world for a wide range of business and financial services, including the following U.S. registrations:

- EQUIFAX: U.S. Reg. No. 1,027,544 (first used in commerce March 4, 1975; registered December 16, 1975) for use in connection with “insurance risk information reporting services concerning potential policy holders”;

- EQUIFAX: U.S. Reg. No. 1,045,574 (first used in commerce March 4, 1975; registered August 3, 1976) for
use in connection with “conducting investigations and reporting on individuals and firms concerning credit,

character and finances […]”;

- EQUIFAX: U.S. Reg. No. 1,644,585 (first used in commerce March 4, 1975; registered May 14, 1991) for
use in connection with, inter alia, “providing online access to computer databases containing information

relating to applicants for insurance, credit, mortgage loans, and employment”.

The Complainant is also the registrant of the domain name <equifax.com>, which was created on February

21, 1995 and resolves to the Complainant’s primary corporate website.

The disputed domain name was registered on January 26, 2016.

5. Parties’ Contentions

A. Complainant

The Complainant has rights in and to the EQUIFAX trademark.

According to the Complainant, the disputed domain name is confusingly similar to its EQUIFAX trademark because it contains its EQUIFAX mark in its entirety combined with the suffix “login”.

The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its mark, and that the Respondent is not commonly known by the disputed domain name. Further, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant indicated that the Respondent could not have chosen or subsequently used the word
“equifax” in the disputed domain name for any reasons other than to take unfair advantage of the reputation
of the Complainant’s famous trademark, which is also confirmed by the fact that the additional term in the

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disputed domain name refers to a relevant activity of the Complainant.

The Respondent is using the disputed domain name to redirect visitors to a website of a competitor of the

Complainant and a pay-per-click (“PPC”) or monetized parking page.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(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.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the EQUIFAX mark.

The disputed domain name <equifaxlogin.com> wholly incorporates the EQUIFAX mark. It also includes the expression “login”, but the mark remains clearly recognizable within the disputed domain name. The generic Top-Level Domain (“gTLD”) “.com”, as a mere technical requirement of registration, is disregarded in the

comparison between a domain name and a trademark for the purposes of assessing confusing similarity.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the 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 [the respondent has] acquired no trademark 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 trademark or service mark at
issue.

As regards the first and third circumstances above, the disputed domain name is directed to a website associated to a Complainant’s competitor and to a landing page displaying PPC links to websites for

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bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use of the disputed domain name. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name.

services that compete with those of the Complainant. The PPC links operate for the commercial gain of the linked sites, or both. The Complainant submits that 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. In these circumstances, the Panel does not consider that the Respondent is using the disputed domain name in connection with a

The use of the expression “login” reinforces the possible confusion between the disputed domain name and the Complainant’s trademarks, since it corresponds to the technical vocabulary of the commercial activity of the Complainant. The Panel finds that the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the

respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract,
for commercial gain, Internet users to its website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
respondent’s website or location or of a product or service on its website or location.

With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its EQUIFAX trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the EQUIFAX mark at the time the disputed domain name was registered. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Respondent uses the disputed domain name in connection with landing pages displaying PPC links to website offering credit reports, credit scores and other services that compete with the Complainant’s services. The PPC links operate for the commercial gain of the Respondent, if it is paid to direct traffic to the

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linked website, or the commercial gain of the operators of those linked website, or both. In view of these
circumstances, the Panel considers that the disputed domain name is intended to attract Internet users by
creating a likelihood of confusion with the Complainant’s EQUIFAX trademark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website or other online location of a service offered on such
other online location within the terms of paragraph 4(b)(iv) of the Policy.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under 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 <equifaxlogin.com> be transferred to the Complainant.

/Daniel Peña/ Daniel Peña Sole Panelist Date: May 5, 2022