WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Equifax Inc. v. Domain Controller, Yoyo Email / Yoyo.Email Ltd.

Case No. D2015-0880

1. The Parties

Complainant is Equifax Inc. of Atlanta, Georgia, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Domain Controller, Yoyo Email / Yoyo.Email Ltd. of Traverse City, Michigan, United States, internally represented.

2. The Domain Name and Registrar

The disputed domain name <equifax.email> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. The Response was filed with the Center on June 24, 2015.

The Center appointed Michael Albert as the sole panelist in this matter on July 8, 2015. 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.

4. Factual Background

Complainant, Equifax, Inc. is a consumer credit reporting agency based in the United States. Founded in 1899 in Atlanta, Georgia, Complainant conducts business both in the United States and internationally. Equifax is a large company listed on the New York Stock Exchange and the S&P 500.

In 1975, Complainant registered its EQUIFAX mark with the United States Patent and Trademark Office. Since that time, it has continuously used the mark in its business and has registered the mark in over 75 other countries.

Complainant registered the domain name <equifax.com> in 1995. It uses that domain name for a website through which it conducts its consumer credit reporting business.

Respondent, Yoyo.Email Ltd., has registered more than 4,000 ".email" domain names, many of them incorporating well-known trademarks of third parties. Some of these domain names were subject to past UDRP and Uniform Rapid Suspension ("URS") proceedings initiated by the owners of those trademarks.

The disputed domain name <equifax.email> was registered by Respondent with GoDaddy.com on April 22, 2014.

To date, Respondent has not actively used the disputed domain name, but intends to do so by operating an email service to certify the sending and receipt of emails.

5. Parties' Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to its registered trademarks. In particular, it alleges that the mere addition of the generic Top-Level Domain (gTLD) ".email" at the end of the mark does nothing to avoid or mitigate confusion.

Complainant also alleges that Respondent has no rights in or legitimate interests in the disputed domain name. In particular, Complainant states that Respondent was never granted permission or a license to use Complainant's EQUIFAX mark. Complainant further alleges that Respondent has never used and does not intend to use the disputed domain name in connection with a bona fide offering of goods and services but rather intends to exploit the goodwill associated with Complainant's mark.

Further, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Complainant believes that, due to the wide recognition of the EQUIFAX mark, Respondent was aware of the trademark when registering the disputed domain name. Complainant also contends that the current passive holding of the disputed domain name does not prevent the assessment of bad faith use.

B. Respondent

Respondent alleges that its intended email service works as a back-end service, in which all emails are directed and documented internally by name. Respondent claims that the disputed domain name will not be seen by the general public. According to Respondent's description of its future business model, the disputed domain name will be used to store email metadata. Although the disputed domain name may be used to forward emails to Complainant, Respondent asserts that Complainant will not be required to agree to or pay for such use.

Respondent maintains that the intended use is a legitimate one and does not infringe Complainant's trademark rights. Respondent argues that it will not use the disputed domain name to confuse or defraud the public by creating a false impression that the disputed domain name belongs to or is authorized by Complainant.

Respondent also contends that it neither registered nor uses the disputed domain name in bad faith—more specifically, that it does not intend to mislead users or illegally profit from Complainant's trademark rights.

Respondent refers to a declaratory judgment of the United States District Court of Arizona as support for the legitimacy and legality of its use of the disputed domain name.

6. Discussion and Findings

At the outset, it must be noted that the Panel has not relied upon the Arizona judgment. It is neither precedential nor particularly instructive. The Arizona judgment appears to have been given by the mutual consent of the parties in that proceeding, of whom Respondent was one, but Complainant was not. SeeFitness International, LLC v. Yoyo.Email, WIPO Case No. D2015-0175; Power Leisure Bookmakers Limited v. Giovanni Laporta, Yoyo.email, WIPO Case No. D2015-0273.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to Complainant's registered EQUIFAX mark.

The disputed domain name is identical to Complainant's EQUIFAX mark as it incorporates the entirety of the trademark without any amendments. The mere addition of the gTLD ".email" has no distinguishing effect and may, as a general principle, not be considered when assessing identity or confusing similarity between a domain name and a trademark. SeeV&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962 ("the mere addition of the suffix 'xxx' and '.com' does not have any impact on the overall impression of the dominant portion of the name"); Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054 ("[T]he mere addition of the letters 'x' and 'xxx' and the suffix 'com' was held to be an irrelevant distinction which did not prevent the likelihood of confusion in the minds of Internet visitors").

Complainant is an international business with a well-known mark, and Internet users are likely to associate the disputed domain name with that trademark.

Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel also finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has not offered evidence of relevant rights or interests.

There is no indication that Respondent is commonly known by the disputed domain name, and there can be no legitimate noncommercial or fair use of the disputed domain name as Respondent admits that it intends to use the disputed domain name commercially for a certified email service.

Respondent maintains that a non-public use of a trademark as an "ad word" would not interfere with Complainant's rights in the mark. Mace Limited v. Giovanni Laporta, Yoyo.Email / Domain Controller, Yoyo Email, WIPO Case No. D2015-0754. However, Respondent's use is a public use. Id. The disputed domain name is visible, albeit inactive, and Internet users looking for email services connected to Complainant are likely to be confused.

Respondent is not currently using the disputed domain name for any offering of goods and services, and the proposed future offering is not a bona fide one within the meaning of the Policy.

Moreover, the decision by a trademark owner not to register a certain domain name with its trademark does not lead to the consequence that it loses its rights in that domain name. Respondent's argument that Complainant has forfeited its rights in the disputed domain name is unavailing.

Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that Respondent registered and is using the disputed domain name in bad faith.

Complainant's mark is well-known, and Respondent does not claim that it was unaware of Complainant's trademark at the time the disputed domain name was registered. In fact, Respondent's business model involves buying thousands of ".email" domain names, each incorporating a well-known trademark or variant thereof. Accordingly, the Panel finds that the disputed domain name was registered with knowledge of Complainant's trademark and in bad faith.

Respondent's proposed business model suggests that Respondent aims to profit from Internet users' mistaken assumption that the domain names are associated with the well-known parties whose marks they incorporate. Respondent's proposed attempt to profit off the goodwill associated with Complainant's mark constitutes bad faith use.

Even though the disputed domain name is currently inactive, the "passive holding" can still qualify as bad faith use. See Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). Respondent's admitted plan for commercialization, lack of permission to use Complainant's mark, and informed use of a domain name likely to be confused with a registered trademark all indicate that Respondent's passive holding of the disputed domain name is, in fact, in bad faith.

Accordingly, Complainant has satisfied 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 <equifax.email> be transferred to Complainant.

Michael Albert
Sole Panelist
Date: July 17, 2015