Equifax Inc. v Gerard Brady

WIPO Case No. D2024-0834

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Gerard Brady

Case No. D2024-0834

1. The Parties

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

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

The Respondent is Gerard Brady, Ireland.

2. The Domain Name and Registrar

The disputed domain name <equifaxc.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2024. On February 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2024, 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 (above_privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 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 February 28, 2024.

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 February 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2024.

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The Center appointed Mireille Buydens as the sole panelist in this matter on March 28, 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 global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers, headquartered in Atlanta, Georgia, United States. The Complainant operates or has investments in 24 countries in North America, Central and

South America, Europe and the Asia Pacific region. Among its many services, the 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. The Complainant is a member of Standard
& Poor’s 500 Index, and its common stock is traded on the New York Stock Exchange.

The Complainant started using the trademark EQUIFAX (“the Trademark”) in 1975, and owns around 221 trademark registrations for the Trademark in around 56 jurisdictions, including:

- United States Trademark No 1,027,544, registered on December 16, 1975;

- France Trademark No 1648261, registered on March 6, 1991;

- Germany Trademark No 2018558, registered on August 11, 1992;

- Ireland Trademark No 142892, registered on October 20, 1993.

The Complainant is the owner of and uses the domain name <Equifax.com> to address its primary website.

This domain name was registered on February 21, 1995.

The Respondent seems to be an individual located in Ireland.

The disputed domain name was registered on January 20, 2007. According to the Complaint, it redirects Internet users to a pay-per-click or monetized parking page that includes links for services related to the Complainant and/or the EQUIFAX Trademark, including “Equifax Credit Services,” “Experian Credit Alerts,”

and “Equifax Credit Information.”. The Respondent has configured MX records for the disputed domain name. At the date of this decision, the disputed domain name resolves to a page asking for verification information.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

First, the Complainant contends that it owns rights in the Trademark and that the disputed domain name is confusingly similar to the Trademark. The disputed domain name contains the EQUIFAX Trademark in its entirety, simply adding the letter “c” at the end. The inclusion of the letter “c” at the end of the disputed

domain name doesn’t alleviate confusing similarity as the Trademark remains recognizable within the
disputed domain name. Besides, the disputed domain name consists of a common, obvious, or intentional
misspelling of the Trademark.

Second, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Trademark in any manner. To the Complainant’s

knowledge, the Respondent has never been commonly known by the disputed domain name and has never

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acquired any trademark or service mark rights in the disputed domain name. The WhoIs record does not identify the registrant of the disputed domain name as “Equifax” or anything similar thereto. Besides, by using the disputed domain name to redirect Internet users to a pay-per-click or monetized parking page that

includes links for services related to the Complainant and/or the Trademark, including “Equifax Credit bona fide offering of goods or services.

Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere registration of the disputed domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity, as it is the case here, can by itself create a presumption of bad faith. In addition, the Complainant has performed a Reverse WhoIs Lookup search and notes that the Respondent appears to be a repeat cybersquatter who has registered numerous domain names that are confusingly similar to well- known trademarks.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements to succeed in its Complaint:

(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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Trademark is reproduced within the disputed domain name, with the mere addition of the
letter “c” at the end of the Trademark. Accordingly, the disputed domain name is confusingly similar to the
Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Besides, the Panel finds that the
disputed domain name consists of a common, obvious, or intentional misspelling of the Trademark.

WIPO Overview 3.0, section 1.9.

The addition of a generic top-level domain (“gTLD”) such as “.com” is viewed as a standard registration
requirement and as such is disregarded under the first element confusing similarity test.

WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not licensed by or affiliated with the Complainant in any way. The disputed domain name is not a generic or descriptive term in which the Respondent might have an interest separate from invocation of the Complainant’s rights. There is no evidence that the Respondent would be commonly known under the disputed domain name, nor is there any evidence of use or demonstrable plans to use the disputed domain

name for a bona fide offering of goods or services. There is no evidence of legitimate noncommercial or fair misspelling of the Trademark. This misspelling will get unnoticed by most of the Internet users, which might erroneously believe that the Respondent’s website belongs to the Complainant.

use of the disputed domain name, either. In addition, the disputed domain name reproduces the

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include the nature of the domain name (e.g., a typo of a widely-known mark). WIPO Overview 3.0, section 3.2.1.

Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880), and the nature of the disputed domain name, the Panel finds that the Respondent was more likely than not aware of the Complainant’s earlier rights at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.

In the present case, the disputed domain name incorporates the Complainant’s well-known Trademark,
which predates the registration of the disputed domain name by many years and is widely used by the
Complainant for many years as a trademark and in its domain name. Given the distinctiveness and well-
established reputation of the Complainant’s Trademark (as also recognized by a previous UDRP panel: See

Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814;

Furthermore, the Respondent could have conducted a trademark search and would have found the
Complainant’s prior registrations in respect of the Trademark. WIPO Overview 3.0 section 3.2.3.

By registering the disputed domain name, the Respondent has sought to create an obvious likelihood of confusion with the Complainant and its Trademark. It results from the composition of the disputed domain name (including the Trademark with the mere addition of one letter, which amounts to a misspelling and will get unnoticed by most Internet users) and from its use (the disputed domain name resolving to a website

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containing pay-per-click links including links for services which appear to be similar to the Complainant’s reached the Complainant’s website and redirect them to third-party links related to the Complainant’s services from which the Respondent most probably derives commercial revenue – a result that constitutes bad faith under paragraph 4(b)(iv) of the Policy.
services) that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with the Complainant’s Trademark for commercial gain. Given
the use of the Complainant’s Trademark in the disputed domain name and the site to which it resolves, the

In addition, the Panel notes that the Respondent’s email address appears in the Reverse Lookup WhoIs search performed by the Complainant as linked with hundreds of domain name registrations which have no link whatsoever and which also sometimes contain well-known trademarks. Although each case must be judged on its own merits, this circumstance can be taken into account in determining whether the Respondent registered or used the disputed domain name in bad faith.

As a result, the Panel finds that the Complainant has established the third element 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 <equifaxc.com> be transferred to the Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: April 4, 2024