Equifax Inc. v mengdan qian

WIPO Case No. DCO2024-0012

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. mengdan qian

Case No. DCO2024-0012

1. The Parties

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

Douglas M. Isenberg, Attorney at Law, LLC, US.

The Respondent is mengdan qian, China.

2. The Domain Name and Registrar

The disputed domain name <myequifax.co> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15,
2024. On February 16, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On February 17, 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 for Privacy) and contact information in
the Complaint. The Center sent an email communication to the Complainant on February 20, 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

21, 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 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2024.

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The Center appointed María Alejandra López as the sole panelist in this matter on March 21, 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 company based in the United States, headquartered in Atlanta, Georgia. The Complainant was originally incorporated in 1913, and its predecessor company dates back to 1899. The Complainant is a global provider of information solutions and human resources business process outsourcing services for businesses, governments, and consumers. The Complainant also offers a credit reporting service that provides consumers with a summary of their credit history, reported to credit bureaus by lenders and creditors.

The Complainant operates or has investments in 24 countries in North America, Central and South America,

Europe, and the Asia Pacific region. The Complainant employs approximately 11,000 people worldwide.

The Complainant owns a large Trademark portfolio, of more than 200 trademark registrations in at least 56
jurisdictions around the world, including in China, for Trademarks that consist of or contain the word

“equifax,” which was first used in commerce and registered in 1975.

The Complainant’s registrations for the EQUIFAX Trademark in the United States include the following:

- US Trademark for EQUIFAX (word mark), Reg. No. 1,027,544, in International Class (“IC”) 36, (first used

in commerce March 4, 1975); registered on December 16, 1975, and in force until December 16, 2025.

- US Trademark for EQUIFAX (word mark), Reg. No. 1,045,574, in IC 35, (first used in commerce March 4,

1975); registered on August 3, 1976, and in force until August 3, 2026.

- US Trademark for MYEQUIFAX (word mark), Reg. No. 6,764,342, in ICs 36 and 42, (first used in
commerce September 1, 2018); registered on June 21, 2022, and in force (initially) until June 21, 2028.

The Complainant also owns the domain names <equifax.com> created on February 21, 1995, used as its primary website and <myequifax.com>, created on November 26, 2005.

The disputed domain name <myequifax.co> was registered on August 28, 2019, and resolves to a pay-per- click (“PPC”) website with commercial links related to the Complainant and/or the EQUIFAX Trademark.

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.

In relation to the first element of the Policy, in summary, the Complainant contends that the disputed domain
name is identical to the Complainant’s registration for MYEQUIFAX, or confusingly similar to the
Complainant’s other registrations for the EQUIFAX Trademark; that the disputed domain name contains the
Complainant’s Trademark EQUIFAX in its entirety, that the inclusion of the word “my” in the disputed domain
name does nothing to alleviate confusing similarity with respect to those registrations for the EQUIFAX
Trademark; that previous panels have recognized the well-known status of the Complainant’s Trademark
EQUIFAX (see, e.g.: Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz,

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WIPO Case No. D2021-3814; Equifax Inc. v. Balticsea LLC, Balcsea LLC, WIPO Case No. D2022-2497; Equifax Inc. v. Rakshita Mercantile Private Limited, WIPO Case No. D2022-1947; Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880; et al.)

In relation to the second element of the Policy, in summary, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since there is no commercial relationship between the Complainant and the Respondent; that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX Trademark in any manner; that by using the disputed domain name to redirect Internet users to a PPC website or monetized parking page that includes links for services related to the Complainant and/or the EQUIFAX Trademark, including “My Equifax,” “Experian Free Credit Report,” and “Free Credit Score,”, the Respondent has failed to create a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy; that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name; that the use of the disputed domain name is clearly commercial which cannot establish rights or legitimate interests to the Respondent under paragraph 4(c)(iii) of the Policy; that according with at least two security vendors the disputed domain name is being used in connection with malicious or phishing activities.

In relation to the third element of the Policy, in summary, the Complainant contends that the disputed domain paragraph 4(b)(ii) of the Policy; that the use of a domain name in connection with a monetized parking page under the circumstances of the present case, constitutes bad faith under paragraph 4(b)(iv) of the Policy; that according to a report from VirusTotal[1] the disputed domain name has been reported as being used in connection with malicious or phishing activities, which constitutes bad faith under paragraph 4(b)(iii) and 4(b)(iv) of the Policy.

name should be considered as having been registered and used in bad faith by the Respondent; that given
the well-known status of the EQUIFAX Trademark, in particular its 221 trademark registrations in at least 56
jurisdictions worldwide, where the oldest of which was used and registered 49 years ago, plus consistent
previous panels’ Decisions, it is clear that the Respondent knew about the Complainant’s Trademark at the
time of the registration; additionally, in relation to the bad faith use, the Complainant contends that the

B. Respondent

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

[1] According to the evidence submitted by the Complainant (Annex 10), VirusTotal, is a service that analyzes files and URLs for viruses,

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following elements:

(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.

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The Complainant must meet these requirements despite the Respondent’s default. No Response or any kind of communication has been submitted by the Respondent, despite the fair opportunity given by the Center to present its case in accordance with paragraph 2(a) of the Rules. Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute under the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and 15(a) of the Rules, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.2.

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 the Trademarks MYEQUIFAX and EQUIFAX for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the MYEQUIFAX and EQUIFAX Trademark are reproduced within the disputed domain name.
Accordingly, the disputed domain name is identical and confusingly similar, if the term “my” is considered as
additional, to the Complainant’s Trademarks respectively, for the purposes of the Policy.
WIPO Overview 3.0, section 1.7 and section 1.8.

Regarding the country code Top-Level Domain (“ccTLD”) “. co”, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is, in this Case, a technical requirement of registration. 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.

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.

According to the unchallenged evidence submitted by the Complainant, this Panel finds that certainly the Complainant has never authorized the Respondent to register or use MYEQUIFAX and/or the EQUIFAX Trademark in any manner, meaning a total absence of commercial relationship between them. This Panel

shares the view on Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098, provided by the
Complainant, where “Consequently, the Panel concludes that the Respondent has no rights nor legitimate

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interests in the Domain Name given there exists no relationship between the Complainant and the own or use the Domain Name.”

The Panel finds that the disputed domain name resolves to a PPC website or monetized parking page that
includes links for services related to the Complainant and/or the EQUIFAX Trademark, including “My
Equifax,” “Experian Free Credit Report,” and “Free Credit Score,” whereas the Complainant explains in
detail, “Experian, like Complainant, is one of the three U.S. credit reporting agencies and, therefore, is a
direct competitor of Complainant”, therefore the Respondent certainly has failed to create a bona fide offering
of goods or services as set out in paragraph 4(c)(i) of the Policy. See WIPO Overview 3.0, section 2.9.

The Panel also notes that there is no evidence showing that the Respondent might have been commonly known by the disputed domain name or a name corresponding to the disputed domain name as set out in paragraph 4(c)(ii) of the Policy.

Furthermore, the Panel finds that the use of the disputed domain name by the Respondent is clearly commercial, even more, if such use as the Complainant has proved is done in connection with malicious or phishing activities, which cannot confer rights or legitimate interests to the Respondent as set out in paragraph 4(c)(iii) of the Policy.

Accordingly, panels have held that the use of a domain name for illegal activity, here alleged phishing, malicious activity, potential malware distribution, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

On the issue of registration, given the facts of this Case, where the Complainant’s Trademark rights
considerably predate the disputed domain name registration, where a well-known Trademark such as
EQUIFAX has been reproduced in its entirety, to be used with commercial and illegal purposes; such facts
are sufficient for this Panel to infer that the Respondent knew the Complainant business and its well-known
Trademark EQUIFAX, at the time of registration of the disputed domain name, and performed it with the
Complainant in mind. WIPO Overview 3.0, section 3.2.2.

On the issue of use, the Panel finds that the use of the disputed domain name is being done in connection with a monetized parking page, for malicious and/or phishing activities, which constitutes bad faith under paragraph 4(b)(iii) and (iv) of the Policy.

Panels have held that the use of a domain name for illegal activity, here alleged phishing, malicious activity, potential malware distribution or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Accordingly, having reviewed the submitted evidence, 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.

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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 <myequifax.co> be transferred to the Complainant.

/María Alejandra López/
María Alejandra López
Sole Panelist
Date: April 4, 2024

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