Equifax Inc. v. JEAN LUCAS / DOMCHARME GROUP
Claim Number: FA1608001686639
Complainant is Equifax Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is JEAN LUCAS / DOMCHARME GROUP (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eqquifax.com>, <equiffax.com>, and <euifax.com>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2016; the Forum received payment on August 2, 2016.
On August 2, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eqquifax.com, postmaster@equiffax.com, postmaster@euifax.com. Also on August 3, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is engaged in the business of reporting insurance risk information concerning potential policy holders. Pursuant to its federal trademark registrations for the EQUIFAX mark—which Complainant uses extensively in the context of its business purpose—Complainant has rights in the mark under Policy ¶ 4(a)(i), (e.g., Reg. No. 1,045,574, registered Aug. 3, 1976)). Respondent’s <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names are confusingly similar to the EQUIFAX mark because they represent mere typosquatting variations of the mark (while adding the “.com” generic top-level domain (“gTLD”) to each as well).
Respondent has no rights or legitimate interests in or to the disputed domain. First, Complainant has not authorized Respondent to incorporate the EQUIFAX mark into any domain registrations, Respondent has not been affiliated with Complainant in any way, and Respondent has adduced no evidence to support the possibility of being commonly known by the disputed domains per Policy ¶ 4(c)(ii). Next, instead of utilizing the disputed domains for a bona fide or legitimate noncommercial purpose, Respondent has arranged for the domains to resolve to websites featuring generic links to third-party websites—some of which contain hyperlinks which directly compete with Complainant’s business (links include: “Equifax® Official Site,” “Credit Report,” and “Equifax® 3 Bureau Scores”).
Respondent registered and used the <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names in bad faith. The resolving pages for each disputed domain have some type of general offer for sale, imputing Policy ¶ 4(b)(i) bad faith registration and use. Respondent is a serial cybersquatter, as demonstrated by its past UDRP history as a respondent found to have registered and used infringing domains in bad faith. (Capital One Financial Corp. v. JEAN LUCAS / DOMCHARME GROUP, FA 1650469 (Forum Jan. 4, 2016); Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA 1596702 (Forum Feb. 10, 2015); Under Armour, Inc. v. JEAN LUCAS / DOMCHARME GROUP, FA 1603208 (Forum Mar. 16, 2015)). Further, the competing hyperlinks on the resolving page presumably net Respondent click-through fees—aspects which demonstrate Policy ¶¶ 4(b)(iii) and (iv) bad faith. Lastly, Respondent’s typosquatting behavior indicates bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of 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 Complainant must prove the following elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is engaged in the business of reporting insurance risk information concerning potential policy holders. Complainant registered the EQUIFAX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,045,574, registered Aug. 3, 1976)). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶ 4(a)(i). Complainant is not required to prove rights (much less superior rights) in Respondent’s home country; merely that Complainant has some rights somewhere. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Complainant has established rights in the EQUIFAX mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names are confusingly similar to the EQUIFAX mark because they represent mere typosquatting variations of the mark (while adding the “.com” gTLD to each as well). The <eqquifax.com> merely adds an extra “q,” the <equiffax.com> adds an extra “f,” and the <euifax.com> merely eliminates the “q.” Such relatively minor changes are not sufficient to prevent a finding of confusing similarity under a under Policy ¶ 4(a)(i) analysis. See generally Microsoft Corporation v. michal restl c/o Dynadot Privacy, FA1409001582219 (Forum Nov. 4, 2014) (finding that the respondent’s addition of a single-character to the complainant’s mark illustrated typosquatting . . . .”); Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Therefore, Respondent’s <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names are confusingly similar to Complainant’s EQUIFAX mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domains. Complainant has not authorized Respondent to incorporate the EQUIFAX mark into any domain registrations. Respondent has not been affiliated with Complainant in any way. The WHOIS lists “JEAN LUCAS / DOMCHARME GROUP” as registrant, which does not bear any obvious relationship to the disputed domain names. Respondent has not contested the accuracy of any of these allegations and has not claimed to be commonly known by the disputed domains under Policy ¶ 4(c)(ii) (or even submitted any evidence). Therefore, the Panel finds Respondent is not commonly known by the disputed domains under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant claims Respondent does not use the disputed domains for (i) a bona fide or (ii) a legitimate noncommercial purpose. The disputed domain names to resolve to websites featuring generic links to third-party websites—some of which contain hyperlinks which directly compete with Complainant’s business (links include: “Equifax® Official Site,” “Credit Report,” and “Equifax® 3 Bureau Scores”). Competing hyperlinks on a dynamic parking page do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Respondent has not demonstrated any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent registered and used the <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names in bad faith. The resolving pages for each disputed domain have some type of general “for sale” offer. This suggests Respondent acquired the disputed domain names primarily for the purpose of selling them to Complainant (or its competitors). As such, this constitutes bad faith registration and under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel finds bad faith registration and use on these grounds.
Complainant claims Respondent is a serial cybersquatter, as demonstrated by its past UDRP history as a respondent found to have registered and used infringing domains in bad faith. Complainant suggests this violates Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). However, Policy ¶ 4(b)(ii) provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added] While the pattern is there, Complainant has not been prevented from registered its mark as a domain name because Complainant owns the <equifax.com> domain (inter alia). Therefore, Policy ¶ 4(b)(ii) is not applicable. This Panel is not willing to find a pattern of these kinds of purchases constitutes per se bad faith under the UDRP.
Complainant claims the competing hyperlinks on the resolving page presumably net Respondent click-through fees—which constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Respondent’s use of dynamic parking pages which contain click-through links constitutes bad faith registration and use under both Policy ¶¶ 4(b)(iii) and (iv).
Complainant claims Respondent’s typosquatting behavior indicates bad faith registration and use under Policy ¶ 4(a)(iii). “Typosquatting” is not a word used in the UDRP. It is a merely a short hand definition for several possible scenarios under Policy ¶ 4(b). As Panels, we are required to apply the UDRP and not be rushed into taking shortcuts without proving the necessary elements under the UDRP. Complainant has previously made out a case for bad faith under various aspects of Policy ¶ 4(b). There is no reason to waive a vague “typosquatting” flag to find more grounds. This Panel refuses to find bad faith registration and use on this ground.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <eqquifax.com>, <equiffax.com>, and <euifax.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, September 7, 2016
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