Equifax Inc. v Web Master Internet Services Private Limited 11

WIPO Case No. D2023-1409

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Web Master Internet Services Private Limited 11

Case No. D2023-1409

1. The Parties

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

Douglas M. Isenberg, Attorney at Law, LLC, U.S.

The Respondent is Web Master Internet Services Private Limited 11, India.

2. The Domain Name and Registrar

The disputed domain name <equaifax.com> (the “Domain Name”) is registered with Tirupati Domains and

Hosting Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2023.

On April 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Undisclosed) and contact information in the Complaint.

The Center sent an email communication to the Complainant on April 4, 2023 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 the same April 4, 2023.

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 the due date for Response was April 25, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 27, 2023.

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The Center appointed Gregor Vos as the sole panelist in this matter on May 1, 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.

4. Factual Background

The Complainant is a company active in the field of information solutions and outsourcing services and provides its customers with inter alia credit reporting services. The Complainant is active in 24 countries and employs approximately 11.000 people worldwide.

The Complainant is the owner of inter alia the following trademark registrations (the “Trademarks”):

- U.S. trademark registration No. 1027544 EQUIFAX registered on December 16, 1975;

- U.S. trademark registration No. 1045574 EQUIFAX registered on August 3, 1976;

- U.S. trademark registration No. 1644585 EQUIFAX registered on May 14, 1991.

The Domain Name was registered on November 26, 2005, and currently redirects to a variety of websites, including websites offering alcohol, and websites relating to cryptocurrencies, and gambling services.

Further, it is undisputed that the Complainant is the holder of the domain name <equifax.com> that was registered on February 21, 1995.

5. Parties’ Contentions

A. Complainant

With the complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The
Complaint is based on the following factual and legal grounds: the Domain Name is identical of confusingly
similar to the Trademarks, the Respondent has no rights or legitimate interests in the Domain Name, and the

Domain Name has been registered and is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known

Trademarks. The Trademarks are incorporated in the Domain Name in their entirety, with the mere addition

of the letter “a” in the middle of the Domain Name. This is an obvious or intentional misspelling of the

Trademarks and leads to a finding of confusing similarity between the Domain Name and the Trademarks.

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain
Name. The Complainant has not authorized the Respondent to register or use the Trademarks. Also, the
Respondent is not commonly known by the Domain Name, and the use of the Domain Name does not
constitute a bona fide offering of goods or services nor a legitimate noncommercial of fair use of the
Trademarks.

Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. According to the Complainant, the well-known character of the Trademarks creates a prima facie presumption that the Respondent registered the Domain Name in bad faith. According to the Complainant, it is implausible that the Respondent was unaware of the Trademarks when registering the Domain Name. Consequently, it is likely that the Respondent registered and is using the Domain Name to disrupt the

Complainant’s business or to attract Internet users for commercial gain. Further, the Respondent’s use of

the Domain Name would constitute bad faith, because the Domain Name redirects Internet users to a variety

of different websites.

B. Respondent

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

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6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules,

the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed

factual presentations.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i.         the Domain Name is identical or confusingly similar to a trademark or a 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 has been registered and is being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between

the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered
to be confusingly similar to the relevant trademark (WIPO Overview 3.0, section 1.9). This is confirmed in
earlier Panel decisions, where the mere addition of a single letter does not prevent a confusing similarity
between the disputed domain name and the relevant trademark (see e.g. Allstate Insurance Company v.
PrivacyProtect. org / Purple Bucquet, WIPO Case No. D2011-0003 (<allsatate.com>) and Dollar Bank,
Federal Savings Bank v. Dollarabank.com Owner, c/o whoisproxy.com Ltd. / Tulip Trading Company, WIPO

Case No. D2016-0699 (<dollarabank.com>)).

In the present case, the Domain Name incorporates the Complainant’s Trademarks in their entirety, with the

mere addition of the letter “a” and the generic Top-Level Domain “.com” which does not prevent a finding of

confusing similarity.

Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

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Paragraph 4(c) of the Policy lists three nonlimitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.

The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of

paragraph 4(c) of the Policy is present.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the

Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four nonlimitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.

In the present case, the Trademarks are registered by the Complainant and have been used for many years.

The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of

the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable

that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its

Trademarks under which the Complainant is doing business. This is reinforced by the fact that the Domain
Name constitutes a misspelling of the Trademarks (WIPO Overview 3.0, section 3.2.1). The well-known
character of the Trademarks has been confirmed by earlier panels (see e.g. Equifax Inc. v. Super Privacy
Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814 and Equifax Inc. v. Domain
Controller, Yoyo Email / Yoyo.Email Ltd., WIPO Case No. D2015-0880).

With regard to use of the Domain Name in bad faith, the Panel finds that the misspelling of the Trademarks in the Domain Name signals an intention of the part of the Respondent to confuse Internet users (WIPO Overview 3.0, section 1.9), which is confirmed by the absence of any rights or legitimate interests on the part of the Respondent in the Domain Name. In addition, the fact that the Domain Name redirects Internet users to a variety of commercial websites suggests that it is being used in bad faith (see Scandic Hotels AB v. Contact Privacy Inc. Customer 0145113232 / ICS INC., WIPO Case No. D2017-2040).

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.

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 Domain Name, <equaifax.com> be transferred to the Complainant.

/Gregor Vos/

Gregor Vos

Sole Panelist
Date: May 15, 2023