Equifax Inc. v Domain Administrator, Fundacion Privacy Services LTD

WIPO Case No. D2022-1004

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

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

Case No. D2022-1004

1. The Parties

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

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

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

2. The Domain Name and Registrar

The disputed domain name <eguifaxcreditreport.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 23, 2022. connection with the disputed domain name. On March 25, 2022, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 19, 2022.

The Center appointed Lorenz Ehrler as the sole panelist in this matter on April 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.

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4. Factual Background

Complainant is a listed company, traded on the New York Stock Exchange, which is active in the fields of information solutions and human resources business process outsourcing services for businesses, governments, and consumers. It operates or has investments in 24 countries. In particular, Complainant 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.

Complainant owns more than 200 trademark registrations in more than 50 jurisdictions which consist of or contain the word EQUIFAX. Most importantly, one can mention the following word trademarks EQUIFAX:

- United States Reg. No. 1,027,544, registered on December 16, 1975, for services in Class 36 “insurance
risk information reporting services concerning potential policy holders”;

- United States Reg. No. 1,045,574, first used in 1975, registered on August 3, 1976, for services in Class 35 “conducting investigations and reporting on individuals and firms concerning credit, character and finances”; and

- United States Reg. No. 1,644,585, first used in commerce in 1975, registered on May 14, 1991, for services
in Classes 35, 36, and 42, claiming, among others, “providing online access to computer databases
containing information relating to applicants for insurance, credit, mortgage loans, and employment”.

Complainant registered the domain name <equifax.com> in 1995 and uses it in connection with its primary website.

The disputed domain name <eguifaxcreditreport.com> was registered on November 17, 2008, and resolves
to a pay-per-click (“PPC”) web page that includes links to third-party offers for services related to

Complainant, including “Free Credit Score Check” and “Credit Score Check”.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to its EQUIFAX trademarks. It stresses the fact that the disputed domain name entirely comprises the aforementioned distinctive sign with a misspelling, namely a letter “g” instead of a “q”.

Furthermore, Complainant states that Respondent is not affiliated or related to it in any way, and that it did not authorize Respondent to use the trademark in question. Complainant also states that Respondent is not commonly known by the disputed domain name and that it has not acquired any trademark rights in it.

Lastly, Complainant contends that Respondent uses the disputed domain name and the website to which it resolves in a way to create confusion with its trademark EQUIFAX, and with the purpose of generating revenue by running click-through links or to redirect Internet users to sponsored websites, which in its view constitutes bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)         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

Complainant holds numerous trademarks for EQUIFAX. These trademarks are registered for various services, in more than 50 jurisdictions around the world. The trademarks put forward by Complainant are sufficient to ground the Complaint.

Under the UDRP, the identical or confusingly similar requirement under paragraph 4(a) of the Policy typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognisable within the disputed domain name. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485).

The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e. “eguifax” is quasi-identical with Complainant’s distinctive trademark EQUIFAX. The incorporation of a trademark in its entirety is

WIPO Overview 3.0”), section 1.9). The use of the letter “g” instead of a “q” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark.
typically sufficient to establish that a domain name is identical or confusingly similar to a trademark obvious or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“
(RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No.

Taking into account that the trademark EQUIFAX is recognisable, the other elements of the disputed domain name, i.e. the words “credit” and “report”, do not prevent a finding of confusing similarity.

As far as the generic Top-Level Domain (“gTLD”) “.com” is concerned, this element has a technical function and therefore does not need to be taken into account when assessing the issue of identity or confusing similarity.

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

B. Rights or Legitimate Interests

Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant has shown that it owns the EQUIFAX trademark, and it has explicitly contested having granted Respondent any right to use its trademark.

In particular, Complainant contends (i) that Respondent has not been commonly known as “Eguifax” and (ii) that it has not used, or demonstrably prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, Complainant has shown that the disputed domain name is resolving to a website that contains sponsored links to third party competitors’ websites, which – in the

absence of any authorisation by Complainant – cannot be possibly viewed as a bona fide use. Actually, it
seems very likely that Respondent receives commercial revenue from the display of links to third party

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offerings. For this reason, there is no bona fide offering of goods or services according to paragraph 4(c)(i)
of the Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953).

The use of a sign highly similar to Complainant’s trademark in the disputed domain name creates the false impression that the Internet user is on Complainant’s website, thus causing confusion. The addition of the words “credit” and “report” actually reinforces the impression that Complainant’s products can be purchased

on or through Respondent’s website, and therefore even increases the risk of confusion (Rockefeller & Co.,
Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957).

Therefore, Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. In line with previous UDRP panel decisions, this means that the burden of production shifts to Respondent (e.g., Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Respondent having failed to respond to the Complaint, this Panel concludes that Respondent does not have any rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.

The undisputed prima facie evidence establishes that Respondent is not affiliated with Complainant and has no license or other authorisation to use Complainant’s trademark.

Respondent registered (or acquired) the disputed domain name many years after Complainant’s trademark was in use and became known. The Panel finds that Respondent should have known about Complainant’s trademark and business when registering or acquiring the disputed domain name. It is highly improbable to the Panel that given the obvious notoriety of the EQUIFAX trademark, Respondent was unaware of it at the time it registered or otherwise became the holder of the disputed domain name. Complainant rightly points out that, due to the indisputable notoriety of the EQUIFAX trademark, Respondent cannot have ignored the trademark when registering the disputed domain name.

This Panel further considers that the nature of the disputed domain name by itself is a strong indication that
Respondent was aware of Complainant’s trademark EQUIFAX, as it seems more than unlikely that
Respondent would have registered – randomly – the disputed domain name (cf. Motul v. Contact Privacy

Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632).

Furthermore, based on the record, the Panel finds that the use to which the disputed domain name has been
put to, evidences Respondent’s bad faith. Indeed, it results from the Panel’s factual findings that
Respondent is using the disputed domain name to display links to credit-related third party offers, including
to competitors’ offers, and that it thereby intends to generate commercial revenue. The Panel therefore finds
that by using a domain name that is confusingly similar with Complainant’s trademark to redirect Internet
users to third party websites, Respondent creates a likelihood of confusion, constituting bad faith pursuant to

paragraph 4(b)(iv) of the Policy.

The Panel thus finds that Respondent registered and is using the disputed domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with

Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

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

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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 <eguifaxcreditreport.com> be transferred to Complainant.

/Lorenz Ehrler/
Lorenz Ehrler
Sole Panelist
Date: May 3, 2022