Equifax Inc. v Thomas Cornelius, Cience
WIPO Case No. D2025-0481
•21-03-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Equifax Inc. v. Thomas Cornelius, Cience
Case No. D2025-0481
1. The Parties
The Complainant is Equifax Inc., United States of America (“United States” or “US”), represented by The
GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Thomas Cornelius, Cience, United States.
2. The Domain Names and Registrars
The Disputed Domain Names <atequifax.com>, <byequifax.com>, <helloequifax.com>, <heyequifax.com>,
<hiequifax.com>, <hqequifax.com>, <joinequifax.com>, <justequifax.com>, <meetequifax.com>,
<onlyequifax.com>, <teamequifax.com>, <testequifax.com>, <theequifax.com>, <trialequifax.com>,
<tryequifax.com>, <useequifax.com>, <withequifax.com>, and <yourequifax.com> are registered with
Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2025. On February 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 10, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names 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 10, 2025, 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 10, 2025.
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 11, 2025. In accordance with the Rules,
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paragraph 5, the due date for Response was March 3, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 4, 2025.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 7, 2025. 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 US-based company established in 1899, specializing in data, analytics, and technology. It primarily provides information solutions for businesses, governments, and consumers, along with human resources business process automation and outsourcing services for employers.
The Complainant owns various trademark registrations containing the “Equifax” element around the world
(collectively the “EQUIFAX Trademarks”), including the following:
| - | EQUIFAX mark: United States Trademark Registration No. 1,027,544, registered on December 16, 1975, in connection with insurance risk information reporting services. |
| - | EQUIFAX mark: United States Trademark Registration No. 1,045,574, registered on August 3, 1976, in connection with conducting investigation and reporting on individuals and firms regarding credit, character and financial matters. |
| - | EQUIFAX mark: United States Trademark Registration No. 1,644,585 registered on May 14, 1991, in connection with providing on-line access to computer databases containing information on insurance and credit applicants. |
The Complainant has been operating an official website at the domain name <equifax.com>, which was registered on February 21, 1995.
The Disputed Domain Names were registered by the Respondent on December, 18, 2024. Except for the
<withequifax.com>, all Disputed Domain Names redirect to the Complainant’s official website
“ The Disputed Domain Name <withequifax.com>, however, resolves to an inactive
website displaying the message, “This site can’t be reached.”
The Respondent, according to the information provided by the Registrar, appears to be an individual or a company with an address located in Miami, United States.
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 Names. Notably, the Complainant contends that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which
the Complainant has rights.
The Complainant contends that it owns various EQUIFAX Trademarks that were first used in commerce and
registered in 1975 and are well-known. The Complainant argues that the Disputed Domain Names are
confusingly similar to its EQUIFAX Trademarks because (1) the Disputed Domain Names incorporate the
Complainant’s EQUIFAX Trademarks in its entirety; and (2) the addition of “at”, “by”, “hello”, “hey”, “hi”, “hq”,
“join”, “just”, “meet”, “only”, “team”, “test”, “the”, “trial”, “try”, “use”, “with” or “your” in the Disputed Domain
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Names does not diminish confusing similarity. The Top-Level Domain “.com” is a standard registration requirement and should be disregarded when assessing the first element of the Policy.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant asserts it has not granted, authorized, licensed, or otherwise permitted the Respondent to
register and/or use the Complainant’s EQUIFAX Trademarks in the Disputed Domain Names. Also, the
Complainant contends that the Respondent is not commonly known by the Disputed Domain Names.
In addition, the Complainant argues that the Respondent has either redirected the Disputed Domain Names to the Complainant’s website or held them passively. This conduct indicates that the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain Names.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Complainant argues that it has accrued substantial goodwill in its EQUIFAX Trademarks since there are
at least 221 trademark registrations in at least 56 jurisdictions worldwide before the registration of the
Disputed Domain Names. Thus, Respondent registered the Disputed Domain Name with knowledge of the
Complainant’s EQUIFAX Trademarks.
In addition, the fact that the Disputed Domain Names redirect to the Complainant’s website or in connection with an inactive website shows that the Respondent registered and used the Disputed Domain Names in bad faith. Furthermore, the Respondent has set up MX records for each of the Disputed Domain Names, enabling the use of these domains for sending and receiving emails. This serves as further evidence of bad faith, as it strongly suggests that the Respondent intends to use the Disputed Domain Names for fraudulent phishing activities.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown rights in respect of the EQUIFAX Trademarks for the purposes of the Policy.
All Disputed Domain Names incorporate the Complainant’s distinctive “Equifax” element of the
Complainant’s EQUIFAX Trademarks in its entirety. The mere addition of “at”, “by”, “hello”, “hey”, “hi”, “hq”,
“join”, “just”, “meet”, “only”, “team”, “test”, “the”, “trial”, “try”, “use”, “with” or “your” in the Disputed Domain
Names does not prevent a finding of the confusing similarity. The Top-Level Domain “.com” is a standard
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registration requirement and does not impact the assessment of confusing similarity. The Disputed Domain
Names are, therefore, confusingly similar to the Complainant’s trademark for the purposes of the Policy.
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.1.
The Complainant has asserted that it has not granted, authorized, licensed, or permitted the Respondent to use the Complainant’s EQUIFAX Trademarks. There is no indication that the Respondent has ever been commonly known by the Disputed Domain Names. There is no evidence to show that the Respondent owns any trademarks for the Disputed Domain Names. Nor does the record reflect the Respondent’s use or demonstrable preparation to use the Disputed Domain Names in connection with a bona fide offering of goods or services prior to any notice of the dispute.
To the contrary, all Disputed Domain Names, except <withequifax.com>, redirect to the Complainant’s official website, which does not constitute a legitimate noncommercial or fair use. As regards <withequifax.com>, while it does not appear to resolve to any active website, there is no evidence to suggest use of, or demonstrable preparations to use, this Disputed Domain Name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
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 Names. The Respondent has not provided any arguments or evidence to demonstrate rights or legitimate interests in the Disputed Domain Names such as those enumerated in the Policy or otherwise.
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.
| <equifax.com> have been registered and used extensively before the registration of the Disputed Domain | In the present case, the Panel notes that the Complainant’s EQUIFAX Trademarks and domain name faith. |
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All Disputed Domain Names, except <withequifax.com>, redirect to the Complainant’s official website. This supports a finding that the Respondent registered and uses the Disputed Domain Names to attract for commercial gain by creating a likelihood of confusion with the Complainant’s EQUIFAX Trademarks as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names, which constitute use in bad faith.
As regards the Disputed Domain Name <withequifax.com>, while it does not appear to resolve to any active website, passive holding of a domain name does not prevent a finding of use in bad faith. Having reviewed the available record, the Panel notes the strong reputation of the Complainant’s trademark, the composition of the Disputed Domain Name, and the failure of the Respondent to submit a response, and finds that the
passive holding of the Disputed Domain Name <withequifax.com> does not prevent a finding of use in bad
faith under the Policy.
The Panel finds that the Complainant has established the third element 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 Names <atequifax.com>, <byequifax.com>, <helloequifax.com>,
<heyequifax.com>, <hiequifax.com>, <hqequifax.com>, <joinequifax.com>, <justequifax.com>,
<meetequifax.com>, <onlyequifax.com>, <teamequifax.com>, <testequifax.com>, <theequifax.com>,
<trialequifax.com>, <tryequifax.com>, <useequifax.com>, <withequifax.com>, and <yourequifax.com> be
transferred to the Complainant.
/Peter J. Dernbach/
Peter J. Dernbach
Sole Panelist
Date: March 21, 2025
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