Equifax Inc. v. Future Media Architects Inc.
Claim Number: FA0805001195133
Complainant is Equifax Inc. (“Complainant”), represented by Alston
& Bird LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name at issue is <efx.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2008.
On May 28, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <efx.com> disputed domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Disputed domain name Dispute Resolution Policy (the “Policy”).
On June 10, 2008, following a correction of a minor deficiency in the Complaint, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on June 30, 2008.
Complainant submitted an additional submission on July 9, 2008 that is determined to be timely under the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an additional submission on July 14, 2008.
On July 10 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant’s contentions can be summarized as follows:
Complainant was founded more than 100 years ago. Equifax Inc (“Equifax”) is a global leader in information solutions and specializes in collecting, organizing, and managing credit, financial, public record, demographic and marketing information. Complainant offers services to both individuals and businesses. To individuals, Complainant provides credit score tracking and analysis, and alerts to potential identity thefts. To businesses, Complainant provides information regarding current and potential customers, including credit histories and financial payment background. In 2006, Equifax reported an operating revenue of over $1.5 billion. Further, since 1975, Equifax’s common stock has been traded on the New York Stock Exchange under the symbol “EFX.” The company is identified by this symbol in all press releases and through international media sources. For years Complainant has also used “EFX” as a service mark and trade name to identify itself and its quality products, services and goodwill in its consumer credit reporting products on its web site and in its annual reports. As a result of its long standing use of the EFX mark and stock symbol, Complainant is well known by the public and trade under the EFX name and mark. Trade and consumers alike identify Complainant under the EFX mark in their products and marketing.
Respondent did not register the name until about May 13 2003 after which Respondent operated a website that included links to third-party commercial sites and content. Three of the most prominent links on the site were for credit related websites and services not affiliated with Equifax. Around December 2007 Respondent changed to a site which purports to be an Internet search engine named Oxide which is really a vehicle for disseminating sponsored links. Many searches reveal no results but a search re credit reports generates about six sponsored links for companies in this field including Equifax.
The disputed domain name is identical to Complainant’s EFX mark (with the addition only of the non-distinct “.com” top-level domain that is disregarded for the purposes of the Policy.)
Respondent has no relationship with or permission from Complainant for the use of the EFX mark. It is not commonly known by the EFX mark and has not used it for any bona fide trading. There is no explanation why it is used for a search engine called “Oxide.” Respondent does not therefore have any rights or legitimate interests in the disputed domain name.
The inclusion of credit related links on the website shows that Respondent registered the disputed domain name with full knowledge of Complainant’s rights and knowing those using <efx.com> would be looking for Complainant. It is blocking Equifax from registering its name in the .com domain and has been found to have registered and used disputed domain names in bad faith in at least five other cases under the Policy. It is disrupting Equifax’s business by redirecting those looking for Equifax to sites of third parties including competitors. It is attempting to profit through the accrual of click through fees by creating a likelihood of confusion of its disputed domain name and Complainant and its EFX mark. The totality of circumstances in the case supports a finding of bad faith registration and use.
B. Respondent’s contentions can be summarized as follows:
Complainant does not have enforceable trade mark rights in EFX which is only a stock symbol. Respondent denies it lacks rights or legitimate interests in the disputed domain name, and that it registered and is using the disputed domain name in bad faith.
Respondent could not have acquired the disputed domain name in bad faith as it did not know when it acquired the disputed domain name that Complainant claimed any trade mark rights in the EFX mark and never had any intention to trade off the goodwill in this alleged mark. It believed the EFX mark was a generic series of three letters available for many legitimate uses and did not believe any party could claim exclusive rights in it. Three letter disputed domain names are very valuable per se because they are very easy to remember and type. Respondent has acquired as many three letter disputed domain names as it can.
Indeed other companies have trademark registrations for the EFX mark. Respondent owns its own trademark rights to the EFX mark.
Respondent is in the business of developing websites. It is currently developing the disputed domain name into a website devoted to sound and visual effects in children’s toys.
Any links on Respondent’s website pointing to credit reports were outside of its control. The click-through advertising was controlled by the Registrar not Respondent as the registrant.
It is true that there are five decisions against Respondent under the ICANN policy but this is because the panelists in question have not understood Respondent’s business. Respondent succeeded in complaints involving the following domain names: <yit.com>, <fsk.com> and <kiwi.com>. See Kiwi European Holdings B.V. v. Future Media Architects, Inc, D2004-0848 (WIPO Jan. 4, 2005); see also Bawag PSK Bank fur Arbeit und Wirtschaft und Osterreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc. D2006-0534 (WIPO July 28, 2006); see also YIT Corp. v. Future Media Architects, Inc., D2007-0588 (WIPO July 27, 2007). And in any event, past decisions should not affect the outcome of this case.
Respondent does not sell disputed domain names and respects the intellectual property rights of others. Complainant delayed bringing this action for five years and only brought it when it appeared that Respondent had become an easy target after a few unfortunate and wrongly decided UDRP decisions, two of which are subject to review by US District Courts.
To further compound its rights in the disputed domain name, Respondent has a bona fide right in the EFX mark. This is partially evidenced by US Trademark Registration No. 1,986,193 assigned to Respondent discussed further below.
The Complaint is an attempt at reverse disputed domain name hijacking.
C. Additional Submissions of Complainant
Pursuant to Rule 7 of the National Arbitration Forum’s Supplemental Rules, Complainant filed an additional submission in answer to Respondent’s Response on July 7, 2008 the new and relevant submissions in which can be summarized as follows:
Respondent claims ownership of rights in the EFX trademark, evidenced by US Trademark Registration No. 1,986,193 but this registration was cancelled 5 years ago. There is no other evidence that Respondent has any trademark rights in EFX.
Respondent has never operated any business at the website or made any public statements about an intent to launch a business regarding sound and visual effects in toys. No business plan or specifics on how the business will work have been supplied. The development sketches provided are no more than a post hoc attempt to justify bad faith registration and use. Kern and Lead are said to be developing a website on the <efx.com> domain name for Respondent and produced the sketches. The sketch bears the following URL: <www.kernandlead.com/kenyon/efx.com/>. The fact that the sketch is located in a directory named after Respondent’s litigation counsel suggests that the sketch was created in response to or in anticipation of a complaint and not pursuant to a legitimate intent to develop a business. There are other sketches there relate to other disputed domain names all again referring to Respondent’s litigation counsel.
Although Respondent now has an address in the British Virgin Islands,
at the time that it registered the Disputed domain
name it was based in the
The services provided by Domain Sponsor, re: links on Respondent’s site, are not automatic and a domain owner has to sign up for the service and agree to the terms and conditions. In any event Respondent is still responsible for the content appearing on the site attached to the disputed domain name.
D. Additional Submissions of Respondent
On July 15, 2008 Respondent submitted an additional submission. In the interests of relevance and natural justice the panelist has taken these into account. The new and relevant submissions of which can be summarized as follows:
The alleged Trademark Registration was valid and subsisting at the time
the disputed domain name was acquired by Respondent. It was cancelled in 2003 under Section 8 of
the Trade Mark Act due to a failure to file a declaration. The common law rights in the
Companies do not usually announce their business plans to the public pre launch.
The other developmental sketches in the Ken and Lead directory are not the subject of UDRP proceedings. It proves in fact that Respondent is in the business of developing web sites and does so with the assistance of legal advice because it respects intellectual property rights.
Redirecting traffic to a web directory is a legitimate use of a generic combination of letters or a mark not exclusively associated with one entity.
The Panel finds that Complainant has not met its burden of proving that Respondent registered and is using the disputed domain name <efx.com> in bad faith.
Paragraph 15(a) of the Rules for Uniform Disputed domain name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant has adduced evidence that it does use the EFX mark as an indication of origin in its business. Examples include use in its credit reports, on its web site and in its annual reports. Whilst the Complainant does not have a trademark registration and this unregistered trade mark use (which is not its main name and brand Equifax) is likely to come to the attention of only those who use Complainant’s services or are aware of Complainant’s New York Stock Exchange symbol “EFX,” Respondent has shown that it does own common law rights in the EFX mark to this degree. The generic top-level domain (“gTLD”) “.com” is disregarded for the purposes of Policy ¶ 4(a)(i) when considering identity or confusing similarity. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). On this basis the disputed domain name is identical to Complainant’s unregistered EFX mark.
This is a complex question, but in light of the finding on bad faith it is not necessary to consider the question of whether Respondent has any right or legitimate interest in its business of wholesale registration of three letter disputed domain names and web site development. See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element).
From its review of the evidence the Panelist does not believe that Respondent targeted Complainant or its unregistered EFX mark at the time the disputed domain name was registered. The owner of the Respondent has gone on oath to say that he was unaware of Complainant’s EFX mark at the time of registration and Complainant has not adduced any evidence that this is not true. Complainant’s EFX mark is not its main name or brand and although it has been able to show some unregistered trademark use it has not shown that its mark would be widely known by those outside of its business or those not familiar with stock symbols on the New York Stock Exchange. Respondent has on the other hand demonstrated that it is in the habit of acquiring three letter domains even if they are meaningless. Complainant has alleged that Respondent has constructed reasons and evidence to show bona fide use of the disputed domain name ex post facto. Complainant has not proven with this evidence that Respondent is using the disputed domain name in bad faith. However even if it had shown bad faith use and even if the signing up to a links service may amount to bad faith use, this does not prove bad faith registration or that Respondent targeted Complainant at the time it acquired the disputed domain name. As the Panel has found that there is no bad faith registration, it is not necessary to consider in detail the extremely complex question of bad faith use.
Reverse Disputed domain name Hijacking
Complainant has shown it has some unregistered rights in the EFX mark. Given the evidence that a letter was unfortunately sent before this action to someone who had left Respondent’s counsel’s law firm and was not received by Respondent, Complainant was effectively denied the chance to discuss matters with Respondent prior to issue of the Complaint. Although Complainant has not explained why it has taken so long to bring a Complaint the Panelist is not prepared to say Complainant brought the Complaint in bad faith. The Panelist is not prepared to make a finding of reverse disputed domain name hijacking.
Complainant has not established all three elements required under the ICANN Policy and the Panel concludes that relief shall be DENIED.
Dawn Osborne, Panelist
Dated: 23 July 2008
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