Equifax Inc. v dominic chiricosta

WIPO Case No. D2024-3234

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. dominic chiricosta

Case No. D2024-3234

1. The Parties

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

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

The Respondent is dominic chiricosta, Canada.

2. The Domain Name and Registrar

The disputed domain name <customerserviceequifax.com> (“Domain Name”) 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 August 7, 2024. On August 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 August 8, 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 the same date.

The Center verified that the Complaint together with the amendment to 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 August 13, 2024. In accordance with the Rules, paragraph
5, the due date for Response was September 2, 2024. The Respondent sent email communications to the
Center on August 8, 9, and 13, 2024.

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The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 16, 2024. 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 is a multinational consumer credit reporting agency headquartered in the United States, and is one of the three largest consumer credit reporting agencies. . In addition to credit and demographic data and services to business, the Complainant sells credit monitoring and fraud prevention services directly to consumers.

The Complainant owns and operates their website under the domain name <equifax.com>. Through this website, the Complainant provides information solutions and business process outsourcing services to businesses, governments and consumers. The Complainant registered the domain name <equifax.com> on February 21, 1995. Further, the Complainant is the proprietor of, inter alia, the following trademark rights:

- United States trademark registration No. 1027544 for the word mark EQUIFAX (registered on

December 16, 1975) for use in connection with “insurance risk information reporting services concerning potential policy holders”,

- United States trademark registration No. 1045574 for the word mark EQUIFAX (registered on August
3, 1976) for use in connection with “conducting investigations and reporting on individuals and firms
concerning credit, character and finances, etc.” and

- United States trademark registration No. 1644585 for the word mark EQUIFAX (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 Domain Name was registered on the date indicated below:

- <customerserviceequifax.com>, June 20, 2024.

At the time of filing of the Complaint, the Domain Name was used in connection with a pay-per-click (“PPC”) or monetized parking page that included links for services related to the Complainant and/or the EQUIFAX trademark. Currently, no changes have been made to the content of the Domain Name, which means that it continues to be used in the manner described above.

5. Parties’ Contentions

A. Complainant

The Complainant substantially alleges the following:

The Complainant is a large corporation with operations or investments in 24 countries, employs approximately 11,000 people worldwide and is a member of the Standard & Poor's (“S&P”) 500 Index where its common stock is traded on the New York Stock Exchange (“NYSE”) under the symbol “EFX”. The Domain Name is identical or confusingly similar to the Complainant’s EQUIFAX trademarks, which several previous panels have considered to be well known. The Complainant holds registered rights to such trademarks.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not received any authorization, license or consent from the Complainant to register or use the EQUIFAX trademark in any manner. The Respondent is not commonly known by and does not own any trademark for the Domain Name. In addition, the Respondent uses the Domain Name in connection with a PPC or

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monetized parking page that contains links to services related to the Complainant and/or the EQUIFAX
trademark, including links to “Equifax Customer Service”. This also suggests that the Respondent is not
using the Domain Name for a bona fide offering of for goods or services, thereby eliminating the possibility
that the Respondent has a legitimate interest in the Domain Name.

The Complainant's rights in EQUIFAX predate the registration of the Domain Name. . The Respondent registered the confusingly similar Domain name in an attempt to profit from the Complainant's trademarks by using the Domain Name to direct Internet users to a PPC or monetized parking page containing links to services related to the Complainant and/or the EQUIFAX trademark.

The Complainant contends that there is a presumption of bad faith because the EQUIFAX marks are well known. It is therefore almost implausible that the Respondent was not aware of the Complainant when it registered the Domain Name, especially since the oldest existing registrations for the EQUIFAX Trademark

were first used and registered 49 years before the Respondent registered the Domain Name. Furthermore, Name to send and receive email is also an indication of bad faith. According to the Complainant, such conduct may indicate that the Respondent intends to use the Domain Name to send email as part of a fraudulent phishing scheme.

because the Domain Name is “so obviously associated” with the Complainant, the Respondent's actions
suggest “opportunistic bad faith” in violation of the Policy. Another indication of bad faith is that the
Respondent uses the Domain Name in connection with a monetized parking site. Finally, the fact that the
B. Respondent

The Respondent has only engaged in brief email correspondence with the Center and has not submitted any formal reply to the Complainant’s contentions. On the Respondent’s last communication to the Center on August 13, 2024, it stated “I am willing to no longer use the domain, but I am not paying any fees to do so.”, and “I was also informed that, I do not have to give up the domain. So long as I do not use it and make a website. I reviewed it with my attorney and a trademark attorney and was also advised, that even with the copyright, I can sell it to Equifax.”

6. Discussion and Findings

6.1 Substantive Analysis

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or

service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has clearly demonstrated that it holds trademark rights in multiple jurisdictions for

EQUIFAX.

The Domain Name clearly includes the EQUIFAX mark in its entirety, with the addition of the word elements geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity under the first element (see, e.g., priceline.com LLC v. shilei, WIPO Case No. D2023-3038).

“customer” and “service”. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

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Therefore, the Panel finds that the Domain Name is confusingly similar to the complainant's trademark

EQUIFAX and the first element of the Policy has been established.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must first establish a prima facie case that the
Respondent lacks rights or legitimate interests in a disputed domain name, and then the burden of proof
effectively shifts to the Respondent to provide evidence of its rights or legitimate interests, see
WIPO Overview 3.0, section 2.1.

In the present case, the Respondent has failed to file a formal response to the Complainant and to refute the Complainant's allegations that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent is not entitled to use the EQUIFAX trademark, the Panel concludes that the Complainant has established an undisputed prima facie case, and therefore the conditions set forth in paragraph 4(a)(ii) of the Policy have been met by the Complainant. The composition of the Domain Name, which consists of the Complainant's trademark in its entirety, together with the descriptive word elements “customer” and “service“ thus creates a risk of implied affiliation with the Complainant, and cannot therefore confer any rights or legitimate interests on the Respondent.

The Panel also notes that the Domain Name was used for a parked page with PPC links to services related to the Complainant and/or the EQUIFAX trademark, which also prevent a finding of rights or legitimate interests for the Respondent. WIPO Overview 3.0, section 2.9.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

It is established that the Complainant holds trademark rights in relation to EQUIFAX. Furthermore, previous UDRP panels have found that the Complainant's EQUIFAX mark should be considered as well-known (see, e.g., Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No.

D2021-3814; Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880). In light of the evidence presented in this case, the Panel sees no reason to reach a different conclusion from previous UDRP panels in this regard. Considering this, and the fact that the Domain Name is confusingly similar to the Complainant’s EQUIFAX trademark, the Panel finds that the Respondent must have been aware of these marks at the time it registered the Domain Name.

The Complainant has provided the Panel with excerpts from past use of the website associated with the Domain Name that clearly show that the Domain Name was being used in connection with a monetized parking site containing PPC links related to the Complainant and the EQUIFAX trademark. This is a clear

indication that the Respondent has registered and used the Domain Name for the sole purpose of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks.

The Panel also notes that the Domain Name, due to its similarity to the Complainant's trademarks and the inclusion of the word elements “customer” and “service”, creates a risk of implied affiliation. The Panel further finds that the absence of any substantive rebuttal by the Respondent or any plausible bona fide use of the Domain Name supports a finding of bad faith.

In light of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, and the third element of the Policy has been established.

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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 Domain Name <customerserviceequifax.com> be transferred to the Complainant.

/Jonas Gulliksson/
Jonas Gulliksson
Sole Panelist
Date: September 27, 2024