Equifax Inc. v Shu Lin

WIPO Case No. D2022-1052

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Shu Lin

Case No. D2022-1052

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 Shu Lin, China.

2. The Domain Name and Registrar

The disputed domain name <equifaxfax.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2022. On March 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 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 April 1, 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 April 5, 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 April 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2022.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 2, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant provides information solutions for businesses, governments and consumers, as well as human resources business process outsourcing services for employers.

Among other registrations, the Complainant owns the following trademark registrations for EQUIFAX:

- United States trademark registration no. 1027544, registered on December 16, 1975, in class 36;
- United States trademark registration no. 1045574, registered on August 3, 1976, in class 35;

- United States trademark registration no. 1644585, registered on May 14, 1991, in classes 35, 36 and 42.

The Complainant has also registered the domain name <equifax.com> in 1995.

The disputed domain name was registered on April 28, 2014.

At the time of filing of the Complaint, the disputed domain name redirected users to a parking page with links
directly related to the Complainant’s field of activity. Some of the featured links reproduced the

Complainant’s trademark.

The Respondent has been involved in at least five other UDRP proceedings.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to its EQUIFAX registered trademark as it identically reproduces its trademark with the mere repetition of the final portion of the trademark “fax”. Furthermore, the repetition of the term “fax” in the disputed domain name does not change the overall impression of the designation as being connected to the Complainant’s trademarks.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent is not affiliated nor authorized by the Complainant in any way; specifically no license nor

authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain name; (iii) the disputed domain name resolves to a parking page with links directly related to the Complainant’s field of activity, which confirms that the Respondent has
failed to use the disputed domain name for a bona fide offering of goods and services.

Finally, the Complainant contends that the Respondent has used and registered the disputed domain name in bad faith. According to the Complainant, the Respondent was aware of the existence of the Complainant and of its trademark when it registered the disputed domain name. The Complainant further asserts that the Respondent has used or is using the disputed domain name for the purpose of generating pay-per-click

(“PPC”) revenue from the diversion of Internet users, a behavior amounting to registration and use in bad
faith. Moreover, the Complainant contends that the Respondent’s involvement in a number of UDRP cases

shows that the Respondent is engaged in a bad faith pattern of cybersquatting.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)        the domain name registered by the respondent 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 domain name; and

(iii)      the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name incorporates entirely the Complainant’s EQUIFAX trademark, with the addition of the term “fax”.

The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a domain name where the relevant trademark is recognizable within the disputed domain name would not prevent a finding of confusing similarity for purposes of the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

In the present case, the trademark EQUIFAX is clearly recognizable in the disputed domain name. The mere addition of the term “fax” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Finally, UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Panel finds accordingly that the Complainant has successfully established the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has failed to file a response.

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or
legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the
Respondent an authorization to use the disputed domain name.

No evidence has been presented that the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services. Instead, the Respondent used the disputed domain name in connection with a website containing PPC links to third-party websites, some of which reproduced the Complainant’s trademark. Applying UDRP paragraph 4(c), UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0). Accordingly, the Respondent’s use of the disputed domain name does not constitute bona fide offering of goods and services.

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel

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finds that the Respondent’s silence corroborates the Complainant’s prima facie case that the Respondent
lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered and used its EQUIFAX trademark. Given the distinctiveness of the Complainant’s trademark, and the presence, on the parking page connected to the disputed domain name, of several references to the Complainant’s field of

activity, the Panel finds it unlikely that the disputed domain name was chosen independently without
reference to the Complainant’s trademark. Consequently, the Panel considers that the Respondent could
not ignore the existence of the Complainant and of its trademark at the time of the registration of the
disputed domain name, such that the disputed domain name was registered in bad faith.

The fact that the Respondent has been involved in numerous previous cases under the UDRP (whether against the Complainant or against other trademark holders) also shows a pattern of bad faith conduct within the meaning of paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0).

Furthermore, the Respondent has used the disputed domain name in connection with a website featuring sponsored links. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO

Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings
Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International
Property Associates, WIPO Case No. D2008-1230).

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 <equifaxfax.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: May 12, 2022