Equifax Inc. v 石磊 (Lei Shi)
WIPO Case No. D2024-5141
•17-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Equifax Inc. v. 石磊 (Lei Shi)
Case No. D2024-5141
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 石磊 (Lei Shi), China.
2. The Domain Name and Registrar
The disputed domain name <totalverifequifax.com> is registered with Cloud Yuqu LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 (REDACTED / REDACTED) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 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 in English on December 18, 2024.
On December 17, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On December 18, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.
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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2025.
The Center appointed Francine Tan as the sole panelist in this matter on January 13, 2025. 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 leading global provider of information solutions and human resources outsourcing services. Headquartered in Atlanta, Georgia, the Complainant was incorporated in Georgia in 1913, and its predecessor company dates back to 1899. The Complainant operates or has investments in 24 countries across the world. The Complainant is listed on the New York Stock Exchange and is a member of Standard & Poor’s 500 Index. The Complainant employs approximately 11,000 people worldwide.
The Complainant owns trademark registrations for EQUIFAX worldwide, including the following:
| - | U.S. trademark registration No. 1,027,544, registered on December 16, 1975; |
| - | U.S. trademark registration No. 1,045,574, registered on August 3, 1976; |
| - | U.S. trademark registration No. 1,644,585, registered on May 14, 1991; |
| - | China trademark registration No. 6513509, registered on March 28, 2010; |
| - | China trademark registration No. 2015983, registered on October 7, 2002; |
| - | China trademark registration No. 6513518, registered on June 28, 2012; |
| - | China trademark registration No. 1955419, registered on November 7, 2002; and |
| - | China trademark registration No. 6513479, registered on July 21, 2010. |
The Complainant’s EQUIFAX trademark was first used in commerce in the U.S. in 1975. The Complainant is the registrant of the domain name <equifax.com>, which was registered on February 21, 1995. It is used as the domain name for its primary website. The Complainant also operates a website at
“ (“the URL”) for a service known as “TotalVerify” from Equifax.
The disputed domain name was registered on June 4, 2024. At the time of filing the Complainant, it resolved
to a parking page containing Pay-Per-Click (“PPC”) links including “Equifax Credit Report”, “Free Credit
Report Equifax”, and “Free Credit Report”.
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.
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Notably, the Complainant contends that:
- The disputed domain name is confusingly similar to the EQUIFAX trademark in which the Complainant has rights. The disputed domain name consists of the Complainant’s EQUIFAX trademark in its entirety with the addition of the descriptive words “total” and “verif” (a shortened version of “verify”). The addition of these words does not prevent a finding of confusing similarity. Further, the addition of these words to the
trademark EQUIFAX causes the disputed domain name to be almost identical to the Complainant’s URL.
| has never been commonly known by the disputed domain name and has never acquired any trademark | - The Respondent has no rights or legitimate interests in the dispute domain name. The Respondent connection with a bona fide offering of goods or services and therefore cannot establish rights or legitimate interests in the disputed domain name. |
| - | The disputed domain name was registered and is being used in bad faith. The Complainant’s |
EQUIFAX is famous and widely known. The Complainant’s oldest trademark registration and first date of use go back 49 years. Previous UDRP panels have referred to the EQUIFAX trademark as “well-known”. Given the fame of the Complainant’s trademark and the Complainant’s URL, the Respondent must have
been aware of the Complainant’s EQUIFAX mark at the time of registration of the disputed domain name. As the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith. Further, the use of the disputed domain name in relation to PPC links to third-party products and services is further evidence of bad faith, as it shows the intention to capitalize on the
likelihood of confusion with the Complainant’s EQUIFAX trademark and URL.
| - | Further, the Respondent is a serial cybersquatter who has lost numerous proceedings under the |
Policy. One of the cases involves the Complainant’s EQUIFAX trademark. This shows a pattern of conduct pursuant to paragraph 4(b)(ii) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons:
| - | The disputed domain name contains the English words “total” and “verif” (a shortened version of the |
word “verify”);
| - | The content of the website associated with the disputed domain name is in English; |
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| - | The Respondent has been involved in numerous prior UDRP cases, which have been conducted in |
English; and
| - | It would be unfair and create an unwarranted delay for the Complainant to translate the Complaint into |
another language.
The Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
Having considered all the circumstances of this case, the Panel determines under paragraph 11(a) of the delay and financial burden that would occur if a translation were required of the Complainant.
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 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 mark is reproduced and recognizable within the disputed domain name. The addition of the words “total” and “verif” does not prevent a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.8.
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.
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.
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There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent was not authorized by the Complainant to use the latter’s EQUIFAX trademark or to register a domain name incorporating the trademark. There is no evidence that the Respondent has used the disputed domain name for a legitimate noncommercial or fair use, without intent for commercial gain. Instead, the evidence shows that the disputed domain name is used for PPC links, some of which advertise third-party goods and/or services which compete with those of the Complainant. The Panel finds such use can never confer rights or legitimate interests on the Respondent in this case. WIPO Overview 3.0, section 2.9.
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.
The Panel is persuaded that this is a typical case of typosquatting. Considering the almost identical nature
of the disputed domain name to the URL and the evidence of the pattern of conduct by the Respondent, it is
evident 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 mark. As is stated in
WIPO Overview 3.0, section 3.1.4:
“[P]anels have consistently found that the mere registration of a domain name that is identical or confusingly
similar (particularly domain names comprising typos […]) to a famous or widely-known trade mark by an
unaffiliated entity can by itself create a presumption of bad faith.”
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
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 <totalverifequifax.com> be transferred to the Complainant.
/Francine Tan/ Francine Tan Sole Panelist Date: January 17, 2025
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