Equifax Inc. v xu shuaiwei

WIPO Case No. D2024-5070

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. xu shuaiwei

Case No. D2024-5070

1. The Parties

The 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.

The Respondent is xu shuaiwei, China.

2. The Domain Name and Registrar

The disputed domain name <equifaxalerttext.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2024, 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 (REDACTED FOR PRIVACY / Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2024, 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 December 12, 2024.

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 December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2025.

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The Center appointed Gilberto Martins de Almeida as the sole panelist in this matter on January 7, 2025. paragraph 7.

The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

4. Factual Background

The Complainant is a well-known global provider of information solutions and human resources business process outsourcing services for businesses, governments and consumers that established its first company in 1899.

As per Annexes 11 and 12, regarding the ownership of relevant trademarks, the Complainant listed the following:

-	EQUIFAX: U.S. Reg. No. 1,027,544 (first used in commerce March 4, 1975; registered December 16,
1975);
-	EQUIFAX: U.S. Reg. No. 1,045,574 (first used in commerce March 4, 1975; registered August 3,

1976); and

-	EQUIFAX: U.S. Reg. No. 1,644,585 (first used in commerce March 4, 1975; registered May 14,
1991).

In addition, the Complainant also registered the domain name <equifax.com> on February 21, 1995, as per
Annexes 5 and 6.

The Complainant’s trademarks, domain name and company name contain the element “Equifax” which is also part of the disputed domain name.

Finally, the disputed domain name, <equifaxalerttext.com>, has been registered on January 25, 2024, as per which appears to “automatically download the software” onto a user’s computer.

Given the information available about the Respondent and its default before the Center, it was not possible to obtain any further information about the Respondent’s past or current activities.

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, besides the aforementioned facts, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark.

According to the Complainant, the addition of the element “alert text” does nothing to diminish confusing similarity.

Moreover, the Complainant states that the disputed domain name is being used for malicious activities, and interests in the disputed domain name, and registered and is using the disputed domain name in bad faith.

thus, in bad faith. These allegations are supported by the opinion of two cybersecurity providers, as per
Annexes 7 and 8. Furthermore, the Complainant informed in the amendment to the Complaint that the

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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, as proven by Annexes 11 and 12. WIPO Overview 3.0, section 1.2.1.

The entirety of the mark registered by the Complainant 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 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. A similar ruling was provided in the precedent TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.

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.

Panels have held that the use of a domain name for illegitimate activity here, claimed as applicable to this case: phishing and distributing malware can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In fact, the Complainant proved at Annexes 7, 8, and 10 that cybersecurity providers listed the disputed domain name’s website as malicious, and MX records have been enabled to potentially execute phishing attacks.

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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 was in bad faith during and after registering the disputed domain name. According to Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524, the respondent had the responsibility to determine whether the disputed domain name registration infringed or violated someone else’s rights. Given that the Complainant’s previously registered mark is well-known, as recognized by several panels (i.e., Equifax Inc. v. Super Privacy Service LTD c/o Dynadot / Babacan Gunduz, WIPO Case No. D2021-3814, it is improbable that the Respondent didn’t know the Complainant’s marks and business.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In

fact, the Respondent lost several domain name disputes associated with cybersquatting, as per the
amendment to the Complaint on December 12, 2024. This circumstance makes it more likely than not that
the Respondent is once again in bad faith.

Panels have held that the use of a domain name for illegitimate activity here, claimed as applicable to this case: phishing and distributing malware constitutes bad faith. WIPO Overview 3.0, section 3.4. In fact, the disputed domain name website being identified as malicious in a public cybersecurity report, as well as the configuration of MX records in order to send emails is more likely than not proof of execution of malicious activities. 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 <equifaxalerttext.com> be transferred to the Complainant.

/Gilberto Martins de Almeida/
Gilberto Martins de Almeida
Sole Panelist
Date: January 21, 2025