Equifax Inc. v Whois Protection Service LTD

WIPO Case No. D2025-1285

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Whois Protection Service LTD

Case No. D2025-1285

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 Whois Protection Service LTD, Australia.

2. The Domain Name and Registrar

The disputed domain name <equifaxax.com> (the “Disputed Domain Name”) is registered with InterNetX

GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2025. On March 31, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 2, 2025, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2025.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 2, 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.

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4. Factual Background

The Complainant is a provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers and among other services, offers a credit reporting service that provides consumers with a summary of their credit history. Incorporated in the United States in 1913 with headquarters in Atlanta, Georgia, the Complainant operates or has investments in more than 20 countries employing approximately 11,000 people worldwide. The Complainant is a member of Standard & Poor’s (S&P) 500 Index, and its common stock is traded on the New York Stock Exchange (NYSE).

The Complainant registered the domain name <equifax.com> in 1995 and continues to use that domain name in connection with its primary website.

The Complainant holds numerous trademark registrations in many jurisdictions including the three following

United States registrations:

- EQUIFAX: United States 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: United States 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 in connection with insurance, credit, employment and claims reporting services”;

- EQUIFAX: United States Reg. No. 1,644,585 first used in commerce in 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.”.

The Disputed Domain Name was registered on January 18, 2023.

At the time of filing of the Complaint, the Disputed Domain Name resolved to a pay-per-click (“PPC") parking page.

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 Name.

Notably, the Complainant contends that:

1)        the Disputed Domain Name is confusingly similar to the Complainant’s EQUIFAX trademark. The Disputed Domain Name incorporates the entirety of the EQUIFAX trademark, and the addition of the letters “ax” at the end of the Disputed Domain Name, following the EQUIFAX trademark, is an

intentional misspelling of the EQUIFAX trademark.

2)        the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the EQUIFAX trademark in any manner. One security vendor has reported that the Disputed Domain Name is associated with malicious activities. By using the Disputed Domain Name in connection with a PPC or monetized parking page that includes links for various services related to the Complainant and/or the EQUIFAX trademark, the Respondent has failed to create a bona fide offering of goods or services. To the Complainant’s knowledge, the 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
monetized parking page, the Respondent’s actions are clearly commercial.

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3)        it is implausible that the Respondent was unaware of the Complainant trademark when registered the Disputed Domain Name given the fame of the trademark. The Disputed Domain Name is so obviously connected with the Complainant, that the Respondent’s actions suggest opportunistic bad faith. Bad faith exists even if the Respondent would argue that it was unaware of the monetized parking page associated with the Disputed Domain Name. The Respondent has established MX (“mail exchange”) records for the Disputed Domain Name. The Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “ax” may bear on assessment of the second and third elements,
the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 3.0, section
2.1.

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 Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

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The Panel also notes that the Complainant asserts that at least one security vendor has reported that the

Disputed Domain Name is associated with malicious activities.

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.

In the present case, the Panel notes that the Respondent registered the Disputed Domain Name containing the entirety of the Complainant’s well-known EQUIFAX trademark, with the mere addition of the letters “ax,” which serves as an intentional misspelling aimed at misleading consumers. This suggests that the

Respondent was most likely aware of the Complainant’s rights and sought to exploit the trademark’s goodwill for commercial gain.

Furthermore, the inclusion of MX records for the Disputed Domain Name indicates a potential intention to use it for sending and receiving emails, which aligns with activities associated with phishing and other malicious acts, as reported by a security vendor. This reinforces the idea that the Respondent’s actions are not innocuous but rather opportunistic and aimed at benefiting from the reputation of the EQUIFAX trademark.

The Respondent’s failure to demonstrate rights or legitimate interests in the Disputed Domain Name, coupled with the absence of any authorization from the Complainant to use the trademark, further supports the Panel’s finding of bad faith. The use of the Disputed Domain Name incorporating the Complainant’s trademark in conjunction with a parking page, displaying links related to the Complainant’s services, indicates a clear attempt to mislead users and profit from the confusion created.

In light of these circumstances, the evidence suggests that the Respondent registered and is using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain

Name constitutes 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 Name <equifaxax.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: May 16, 2025