Equifax Inc. v. Future Media
Architects Inc.
Claim Number: FA0805001195133
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@efx.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.
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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