Equifax Inc. v Milen Radumilo

WIPO Case No. D2022-0780

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Milen Radumilo

Case No. D2022-0780

1. The Parties

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

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

The Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <creditwatch-equifax.com> is registered with Communigal Communications Ltd.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2022.

On March 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 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 March 10, 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 March 14, 2022. In accordance with the Rules, paragraph

5, the due date for Response was April 3, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 5, 2022.

The Center appointed Petra Pecar as the sole panelist in this matter on April 20, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant Equifax Inc. is a leading global provider of information solutions and human resources business process outsourcing services for businesses, governments, and consumers. The Complainant was originally incorporated under the laws of State of Georgia, United States in 1913, and its predecessor company dates back to 1899. It operates or has investments in 24 countries in North America, Central and South America, Europe, and the Asia Pacific region, employing approximately 11,000 people worldwide.

The Complainant is a member of Standard & Poor’s (S&P) 500 Index, and its common stock is traded on the

New York Stock Exchange.

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 has used the EQUIFAX trademark for decades and owns registrations for the EQUIFAX

trademark and various trademarks that comprise the word “equifax” around the world for a wide range of

business and financial services, including the following registrations in the United States:

- EQUIFAX: U.S. Reg. No. 1,027,544 (first used in commerce March 4, 1975; registered on

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

- EQUIFAX: U.S. Reg. No. 1,045,574 (first used in commerce March 4, 1975; registered on

August 3, 1976) for use in connection with “conducting investigations and reporting on individuals and firms

concerning credit, character and finances […]”; and

- EQUIFAX: U.S. Reg. No. 1,644,585 (first used in commerce March 4, 1975; registered on

May 14, 1991) for use in connection with, inter alia, “providing online access to computer databases containing information relating to applicants for insurance, credit, mortgage loans, and employment […]”.

The Complainant is also the registrant of the domain name <equifax.com>, which was created on February

21, 1995 and resolves to the Complainant’s primary corporate website.

The disputed domain name was registered on February 11, 2022, 47 years after the Complainant first used and registered EQUIFAX trademark in commerce and 27 years after the Complainant registered the domain name <equifax.com>. Furthermore, the evidence provided by the Complainant indicates that the disputed

domain name was used for a Pay-Per-Click (“PPC”) parking page that provides links to various third-party

websites, including a website for TransUnion, which, like the Complainant, is one of the three U.S. credit

reporting agencies and, therefore, is a direct competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant cites its U.S. trademark registrations which are some of a total number of 221 trademark registrations in at least 56 jurisdictions around the world for the mark that consists of or contains the word

“equifax”, as evidence of its rights. Its trademark registrations predate the Respondent’s registration of the

disputed domain name. The Complainant states that the disputed domain name is identical or confusingly similar to its trademarks, because it incorporates in its entirety the EQUIFAX trademark and the addition of

the words “credit” and “watch” as well as the hyphen, or the addition of the generic Top-Level Domain

(“gTLD”) “.com” does not prevent a finding of confusing similarity between the disputed domain name and

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the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, because:

- 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;

- the Respondent has failed to create a bona fide offering of goods or services under the Policy, by using the disputed domain name to, inter alia, redirect visitors to a website for TransUnion, one of the

Complainant’s primary competitors, as well as by including commercial links for third-party websites on the

website associated with the disputed domain name;

- 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; and

- the use of the disputed domain name to redirect visitors to a competitor’s website or a monetized

parking page shows that the Respondent’s actions are clearly not legitimate and are misleading, as well as

commercial in nature.

The Complainant contends that the disputed domain name should be considered as having been registered

and used in bad faith by the Respondent, because it is obvious that the Respondent’s motive in registering

and using the disputed domain name is to disrupt the Complainant’s relationship with its customers or

potential customers or attempt to attract Internet users for potential gain. The Complainant further contends
that the Respondent has failed to create a bona fide offering of goods or services under the Policy by

including commercial links for third-party websites on the website associated with the disputed domain

name. According to the Complainant’s undisputed allegations, it is implausible that the Respondent was

unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed

domain name, given the worldwide reputation of the Complainant and its EQUIFAX trademarks and the

composition of the disputed domain name entirely reproducing the Complainant’s trademark.

Finally, in its amendment to the Complaint dated March 10, 2022, the Complainant stated that the disputes under the Policy.

B. Respondent

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

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A

Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance

with the Policy, these Rules and any rules and principles of law that it deems applicable”, as indicated in

paragraph 15(a) of the Rules.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

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A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must, firstly, establish rights in a trademark or service mark and, secondly, establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

A trademark registration provides a clear indication that the rights in the trademark belong to the

Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,

(“WIPO Overview 3.0”), section 1.2.1). The Complainant has provided evidence of ownership of registrations

for the EQUIFAX trademark. Therefore, the Complainant has established that it has rights in the EQUIFAX

trademark.

Further, the disputed domain name incorporates the EQUIFAX trademark in its entirety, with the addition of

the words “credit” and “watch” and a hyphen before the trademark EQUIFAX. The fact that the disputed

domain name wholly incorporates the Complainant’s trademark is sufficient to establish identity or confusing

similarity for the purpose of the Policy, despite the addition of other terms to such marks. Such additional

terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of

confusing similarity between the disputed domain name and the Complainant’s trademarks, in accordance

with section 1.8 of the WIPO Overview 3.0.

Finally, it is well accepted practice by UDRP panels that a gTLD, such as “.com”, is typically ignored when

assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). Accordingly, the Panel determines that the disputed domain name is confusingly

similar to the Complainant’s trademark.

In accordance with the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its EQUIFAX trademark.

B. Rights or Legitimate Interests

Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied the second element, as set out in paragraph 4(a)(ii) of the Policy (see also WIPO Overview 3.0, section 2.1).

Moreover, the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in the domain name. In particular, paragraph 4(c) of the Policy gives examples that might show rights or

legitimate interests in a domain name, including: (i) use of the domain name “in connection with a bona fide offering of goods or services”; or (ii) demonstration that the respondent has been “commonly known by the

domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

In this case, the Respondent did not submit a response to the Complainant’s contentions. From the

evidence provided by the Complainant, the Respondent has used the disputed domain name for the PPC

website that, inter alia, redirected Internet users to a website for TransUnion, one of the Complainant’s

primary competitors, which cannot be considered as use of the disputed domain name in connection with a
bona fide offering of goods or services.

There is no evidence to indicate that the Respondent has ever been commonly known by the disputed domain name. On the contrary, the Respondent is the individual that has been previously engaged in numerous UDRP proceedings (and where abuse of third-party trademark rights was confirmed by UDRP

panels), which strongly indicates a pattern of trademark-abusive domain name registrations made by the

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Respondent. Such behavior clearly cannot constitute any rights or legitimate interests in respect to the disputed domain name (see section 2.5.3 of the WIPO Overview 3.0).

Additionally, by using the disputed domain name in connection with a PPC website and a monetized parking

page, the Respondent’s actions are also clearly oriented for commercial gain and, therefore, the Respondent

cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.

The Panel therefore finds that the Complainant has made out prima facie demonstration of the Respondent’s

lack of rights or legitimate interests in respect of the disputed domain name, which has not been rebutted by
the Respondent, and that the Complainant has accordingly established the second element of the Policy in

accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires the Complainant to demonstrate that the

Respondent registered and is using the disputed domain name in bad faith. The Policy describes several

non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under

paragraph 4(b)(iv) of the Policy, a panel may find bad faith when, by using the domain name, the respondent

has intentionally attempted to attract, for commercial gain, Internet users to its website or other online

location by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship,

affiliation, or endorsement of the website or location or of a product or service on the website or location.

Based on the information and the evidence provided by the Complainant, the Respondent has used the

disputed domain name to redirect Internet users to a website of the Complainant’s competitor and in

connection to a PPC or monetized parking page. The Respondent has provided no explanation, and none is immediately obvious, as to why it registered a domain name containing the EQUIFAX trademark and redirect it to a website containing PPC links unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its EQUIFAX mark.

The Panel finds that at the time of registration of the disputed domain name, the Respondent was or should

have been aware of the Complainant’s trademarks, since the Respondent’s registration of the disputed

domain name occurred more than 47 years after the Complainant’s registration of the earliest of its

trademarks, and since a trademark register search, or even a simple online search prior to the registration of

the disputed domain name, would have informed the Respondent of the existence of the Complainant’s

trademarks and the Complainant’s extensive use of the EQUIFAX trademark as a source identifier.

Moreover, the construction of the disputed domain name itself, namely the combination of the Complainant’s

trademark and the words “credit” and “watch”, is such to imply that the Respondent was aware of the

Complainant and its services. Such choice of words within the disputed domain name actually increases a likelihood of confusion between the disputed domain name and the EQUIFAX trademark, as it directly refers to the type of services that would be offered by the Complainant, as a credit reporting service.

In these circumstances where the Respondent has offered no explanation for the registration of the disputed domain name, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of, as well as to disrupt the

business of the Complainant by redirecting Internet users to a competitor’s website.

Based on the evidence presented by the Complainant, and uncontested by the Respondent, the Panel

concludes that the Respondent has engaged in a pattern of registering third parties’ marks in infringing

domain names, a conduct known as cybersquatting. Such behavior is an indicator of registration of the

disputed domain name in bad faith in accordance with section 3.1.1 of the WIPO Overview 3.0.

For these reasons, this Panel finds that the Respondent’s registration and use of the disputed domain name

are in bad faith in accordance with 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 <creditwatch-equifax.com> be transferred to the Complainant.

/Petra Pecar/

Petra Pecar

Sole Panelist
Date: May 4, 2022