Equifax Inc. v Hulmiho Ukolen, Poste restante

WIPO Case No. D2022-4429

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Hulmiho Ukolen, Poste restante

Case No. D2022-4429

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 Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <eguifax.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2022. On November 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2022, 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 (Domain Admin, Whois protection, this company does not own this domain name s.r.o.) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2022 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 November 22, 2022.

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 November 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2022.

The Center appointed Kaya Köklü as the sole panelist in this matter on December 19, 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 company with its registered seat in the United States, which 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. Its roots date back to the year 1899.

The Complainant is owner of the EQUIFAX trademark, which is registered in a large number of jurisdictions.
For instance, the Complainant is the owner of the United States Trademark Registrations No. 1,027,544,
registered on December 16, 1975, covering protection for services in class 36; No. 1,045,574, registered on
August 3, 1976, covering protection for services in class 35; and No. 1,644,585, registered on May 14,

1991, covering protection for services in classes 35, 36, and 42 (Annexes 8 and 9 to the Complaint).

Since February 21, 1995, the Complainant further owns and operates its official website at <equifax.com>
(Annexes 5 and 6 to the Complaint).

The Respondent is reportedly an individual from Finland, who has been involved in more than 60 further UDRP disputes as a Respondent, a vast majority of them decided against him (Annex A to the Amended Complaint).

The disputed domain name was registered on May 25, 2004.

In accordance with evidence presented by the Complainant, the Respondent used the disputed domain name by redirecting visitors to a website of a competitor of the Complainant (Annex 7 to the Complaint). At the date of this decision, the disputed domain name does not resolve to an active website anymore.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its EQUIFAX trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Finally, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. Due to his involvement in more than 60 UDRP cases (most of which he lost), the Complainant particularly believes that the Respondent is a serial cybersquatter, who is engaged in pattern of registering domain names infringing third parties’ trademark rights.

B. Respondent

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

6. Discussion and Findings

According to paragraphs 14 and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with
the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the
Complaint where no formal response has been submitted.

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In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.3.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

Before discussing the three elements under paragraph 4(a) of the Policy, the Panel notes that the Complaint was filed more than 18 years after the registration of the disputed domain name. However, UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See WIPO Overview 3.0, section 4.17. In view of the Panel, this particularly applies in the present case, in which the Respondent (in the absence of a response) did not provide any indication that the Complainant has delayed its Complaint in a legally abusive manner.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the EQUIFAX mark by virtue of various trademark registrations.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered EQUIFAX trademark. As stated at section 1.9 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, misspellings would not prevent a finding of confusing similarity.

In the present case, the Panel notes that the disputed domain name incorporates an apparent misspelling of the Complainant’s EQUIFAX trademark by simply transposing the letter “q” with the letter “g”, which in view of the Panel, still makes the Complainant’s EQUIFAX trademark well recognizable within the disputed domain name.

Hence, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s
EQUIFAX trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the

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evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel
agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the
burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed
domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d.
v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark EQUIFAX in a confusingly similar way within the disputed domain name.

In the absence of a response, there is particularly no doubt that the Respondent was well aware of the Complainant and its EQUIFAX trademark before registering and using the disputed domain name. The Panel is convinced that the Respondent has deliberately chosen the disputed domain name to cause

confusion with the Complainant and its business among Internet users.

Bearing in mind that the visitors of the disputed domain name were redirected to a website of a competitor to the Complainant, the Panel has no difficulties in concluding that the Respondent is not making a bona fide offering of goods or services of the disputed domain name nor a legitimate noncommercial or fair use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel further believes that the Respondent has registered and is using the disputed domain name in bad faith.

It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead Internet users who particularly are searching for the Complainant and its services. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.

Additionally, the Panel finds that the Respondent is using the disputed domain name in bad faith. There is no need to discuss in detail that using a confusingly similar domain name for redirecting visitors to a competitor’s website constitutes bad faith under the Policy. In this regard, the Panel also notes that the Respondent appears to be frequently engaged in a bad faith pattern of domain name registration. Bearing all this in mind, the Panel concludes that this is rather a typical typosquatting case.

The fact that the disputed domain name currently does no longer resolve to an active website does not prevent a finding of bad faith.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith
and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph
4(a)(iii) of the Policy.

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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 <eguifax.com> be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: January 2, 2023