Equifax Inc. v S Jon Grant

WIPO Case No. D2022-4824

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Equifax Inc. v. S Jon Grant

Case No. D2022-4824

1. The Parties

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.

Respondent is S Jon Grant, United States.

2. The Domain Name and Registrar

The disputed domain name <exuifax.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2022. On December 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2022, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2023.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on January 26, 2023. 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

Complainant is a global provider of information solutions and human resources business process
outsourcing services for businesses, governments, and consumers. Complainant was originally incorporated
under the laws of the State of Georgia (United States) in 1913, and its predecessor company dates back to
1899.

Complainant operates or has investments in 24 countries in North, Central, and South America, Europe, and the Asia Pacific region.

Complainant is the registrant of the domain name <equifax.com>, which was created on February 21, 1995, and is Complainant’s primary website.

Complainant owns at least 221 trademark registrations in at least 56 jurisdictions around the world for marks that consist of or contain the word “equifax”, which was first used in commerce and registered in 1975.

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

EQUIFAX: U.S. Reg. No. 1,027,544 (first used in commerce on 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 on 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 [...]”.

EQUIFAX: U.S. Reg. No. 1,644,585 (first used in commerce on March 4, 1975; registered on May 14, 1991) for use in connection with, inter alia, “providing on-line access to computer databases containing information relating to applicants for insurance, credit, mortgage loans, and employment”.

Respondent is a serial cybersquatter who has lost numerous decisions under the UDRP Policy, including the following nine cases:

- Carvana, LLC v. Super Privacy Service LTD c/o Dynadot / S Jon Grant, WIPO Case No. D2022-1152;

- Riot Games, Inc. v. Super Privacy Service Ltd. c/o Dynadot / S Jon Grant, WIPO Case No. D2021-3987;

- Enel S.p.A. v. S Jon Grant, WIPO Case No. D2021-3020;

- International Business Machines Corporation v. S Jon Grant, WIPO Case No. D2020-3098;

- Dishoom Limited v. Super Privacy Service LTD c/o Dynadot / S Jon Grant, WIPO Case No. D2020-2938;

- Crédit Industriel et Commercial S.A. v. Super Privacy Service LTD c/o Dynadot / S Jon Grant, WIPO Case

No. D2020-1099;

- Andrey Ternovskiy dba Chatroulette v. S Jon Grant, WIPO Case No. D2018-2550;

- Andrey Ternovskiy dba Chatroulette v. S Jon Grant, WIPO Case No. D2018-1110; and

- Tata Motors Limited v. S Jon Grant, WIPO Case No. D2015-0092.

The disputed domain name was registered on October 31, 2006. At the time of filing the Complaint, the disputed domain name engaged in dynamic redirect, resolving to various third party websites, as further explained below.

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5. Parties’ Contentions

A. Complainant

The disputed domain name was created on October 31, 2006, 31 years after Complainant first used and registered the EQUIFAX trademark in commerce and 11 years after Complainant registered the domain name <equifax.com>.

Respondent has used the disputed domain name to redirect visitors to a variety of different websites, including a website that falsely appears to be a warning from “Apple MacOS Platform Security” and falsely informing them of a “Trojan Spyware Alert” that has “blocked” their computer, encouraging them to call a “MacOS Support” telephone number as shown below:

The disputed domain name is confusingly similar to Complainant’s EQUIFAX trademark as it contains the EQUIFAX Trademark in its entirety, simply replacing the letter “q” with the letter “x”. The relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “exuifax”), as it is well-established that the Top-Level Domain (“gTLD”) (i.e., “.com”) may be disregarded for this purpose.

Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized Respondent to register or use the EQUIFAX trademark in any manner. 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.

By using the disputed domain name in connection with a website that falsely informs visitors of security threats on their computers, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Using the disputed domain name in connection with a website that falsely informs visitors of security threats on their computers, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

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The EQUIFAX trademark is clearly famous and/or widely known, given that it is protected by at least
221 trademark registrations in at least 56 jurisdictions worldwide, the oldest of which was used and
registered 47 years ago. Because the disputed domain name is “so obviously connected with” Complainant,

Respondent’s actions suggest “opportunistic bad faith” in registering the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has demonstrated it owns registered trademark rights in its famous EQUIFAX mark. The disputed domain name incorporates a misspelling of the EQUIFAX mark, namely with the mere substitution of the letter “q” with the letter “x”, which does not prevent a finding of confusing similarity between the mark and the disputed domain name. See sections 1.7 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).

Accordingly, the disputed domain name is confusingly similar to the mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. The fact that Respondent registered the disputed domain name which is a misspelling of Complainant’s EQUIFAX mark indicates that Respondent sought to use the disputed domain name with an intent of capitalizing on the misdirection the nearly identical disputed domain name would cause Internet users, which does not amount to fair use. Complainant has also presented prima facie evidence that the website at the disputed domain name contained trojan spyware which could potentially lock a user out of its computer.

After a complainant has made out a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name; rather, the evidence suggests that the disputed domain name was registered by Respondent to confuse users seeking or expecting Complainant. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case

No. D2013-1556.

In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after Complainant first registered and used its EQUIFAX mark. Considering the evidence on the record provided by Complainant with respect to the extent of use of its EQUIFAX mark, the typosquatting of Complainant’s mark in the disputed domain name, combined with the absence of any evidence provided by Respondent to the contrary, it is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, Respondent undoubtedly knew of Complainant’s EQUIFAX mark, and knew that it had no rights or legitimate interests in the disputed domain name. Prior UDRP panels have held that the mere registration of a domain name that is identical or

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confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

There is no benign reason for Respondent to have registered the disputed domain name. Further, the use by Respondent is clearly in bad faith. Complainant provided evidence the website for the disputed domain name could infect users’ computers with a trojan virus1. Prior UDRP panels have held that the use of a

domain name for purposes other than to host a website (such as malware distribution) may constitute bad faith. See section 3.4 of the WIPO Overview 3.0. Notwithstanding the prior use, the Panel notes that the disputed domain name currently fails to resolve, which serves as further indication of bad faith. Moreover, considering the circumstances of the proceeding, the current passive-holding of the disputed domain name does not prevent a finding of bad faith. See section 3.3. of the WIPO Overview 3.0.

Accordingly, the Panel concludes that Complainant has satisfied 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 <exuifax.com> be transferred to Complainant.

/Colin T. O’Brien/
Colin T. O’Brien
Sole Panelist

Date: February 9, 2023

1 The disputed domain name currently does not resolve to an active website possibly because Complainant worked with the registrar to

disable the website.