Equifax Inc. v Registration Private, Domains By Proxy, LLC / Wilson Caicedo

WIPO Case No. D2022-2810

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Registration Private, Domains By Proxy, LLC / Wilson Caicedo

Case No. D2022-2810

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 Registration Private, Domains By Proxy, LLC, United States / Wilson Caicedo, Colombia.

2. The Domain Name and Registrar

The disputed domain name <equifax.site> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2022. connection with the disputed domain name. On August 2, 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 August 3, 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 August 4, 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 August 10, 2022. In accordance with the Rules, paragraph
5, the due date for Response was August 30, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 31, 2022.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 7, 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

page 2

Rules, paragraph 7.

4. Factual Background

The Complainant was founded in 1913 and is a leading global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers. The Complainant operates or has investments in 24 countries and employs approximately 11,000 people worldwide.

The Complainant owns trademark registrations in various jurisdictions, including the United States trademark
EQUIFAX (Reg. No. 1027544, registered on December 16, 1975), the United States trademark EQUIFAX
(Reg. No. 1045574, registered on August 3, 1976), and the Colombian trademark EQUIFAX (Reg. No.
185350, registered on March 18, 1996).

The Complainant further holds the domain name <equifax.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <equifax.com> domain name.

The disputed domain name was registered on July 20, 2022 and resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

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

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the EQUIFAX trademark.

The EQUIFAX trademark is wholly reproduced in the disputed domain name. It has become a consensus view among UDRP panels that the applicable Top-Level Domain (“TLD”) in a domain name is a standard registration requirement and as such may be disregarded when assessing confusing similarity under the first

element of the Policy. This practice also applies with regard to new TLDs such as “.site” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.11.1 and 1.11.2).

Therefore, the Panel concludes that the disputed domain name is identical to the Complainant’s EQUIFAX trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

page 3

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Panel notes that the term “equifax” does not appear to have any dictionary meaning to justify the Respondent’s selection of the disputed domain name, but is a coined term. Moreover, the disputed domain name is being passively held, as discussed further below under section C. See also section 2.10 of the WIPO Overview 3.0.

Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a
prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The totality of the circumstances in each case will be examined, and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing of its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3).

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, the Panel finds that the Respondent was most likely aware of the Complainant’s trademark when registering the disputed domain name. The Respondent has not submitted any response, and the Panel sees no plausible good faith use to which the disputed domain name may be put. Hence, the Panel finds it more likely than not that the Respondent was targeting the Complainant and the goodwill it has obtained for its trademark EQUIFAX. The Panel notes that screening of trademark registrations is readily available through online databases (or by a mere Internet search) to avoid the registration of a trademark-abusive domain name.

In the totality of circumstances of this case, the Panel finds that the Respondent has therefore registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) 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 <equifax.site> be transferred to the Complainant.

/Tobias Zuberbühler/
Tobias Zuberbühler
Sole Panelist
Date: September 15, 2022