The Complainants are Equifax Inc., Equifax Pty Ltd, and Equifax Australia Information Services and Solutions Pty Limited, all located in the United States of America (“United States” or “USA”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Moniker Privacy Services, United States / Domain Administrator, Go Name Logic, LLC, United States.
The disputed domain name <vedaetrace.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 28, 2020 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 July 28, 2020.
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 July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 28, 2020. 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.
The Complainant is a global provider of information solutions and outsourcing services for businesses, governments, and consumers, incorporated in 1913 and headquartered in Atlanta, Georgia, USA. The Complainant employs approximately 11,000 people worldwide and operates in a number of countries in North America (USA and Canada), Asia Pacific (Australia, New Zealand, and India), Europe (the United Kingdom, Spain, and Portugal) and Latin America (Argentina, Chile, Costa Rica, Ecuador, El Salvador, Honduras, Mexico, Paraguay, Peru, and Uruguay). The Complainant is a member of Standard & Poor’s (S&P) 500 Index, and its common stock is traded on the New York Stock Exchange (NYSE) under the symbol EFX.
The Complainant operates a business in Australia known as “eTrace”, using the domain name <vedaetrace.com.au>, which is an identity search system, providing results sourced from a comprehensive up-to-date database of over 7 million Australian and New Zealand residents.
The Complainant owns 65 trade mark registrations with the element VEDA (the “Trade Mark registrations”), the oldest of which was registered in 2010. The Trade Mark registrations including the following (the “Trade Mark”):
- Australia Reg. No. 1,510,080 word mark VEDA ETRACE, registered on April 4, 2013.
The Domain Name was created on February 29, 2016, and redirects Internet users to a website called “Detective Desk Search” that advertises “Australia’s leading search database”.
According to the Complainant, since the Domain Name contains the VEDA element in its entirety, it is identical to the Trade Mark and confusingly similar to the Trade Mark registrations. In this connection, the Complainant points out that the generic Top Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name, since the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the VEDA mark in any manner. In addition, the Complainant contends that by redirecting the Domain Name to a website for one of the Complainant’s competitors, the Respondent has acted with the intent of generating revenue for itself and has failed to create a bona fide offering of goods or services under the Policy. Furthermore, the Complainant brings forward that the Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name.
According to the Complainant, the Domain Name should be considered as having been registered and used in bad faith by the Respondent, as the Respondent’s motive in registering and using the Domain Name seems to have been to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. Furthermore, the Complainant submits that given the global reach and popularity of the Complainant’s services under the Trade Mark and the Trademark registrations, it is inconceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and the Trade Mark. In addition, the Complainant points out that by redirecting the Domain Name to a website offering the same services as those with which the Complainant uses the Trade Mark, the Respondent is clearly creating a likelihood of confusion with the Trade Mark, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant also brings forward that, given that the first Trade Mark registration was issued in 2010 and therefore six years before the Domain Name was created, and given the very strong, well-established, worldwide reputation of the Trade Mark registrations, the Respondent had constructive notice of the Trade Mark registrations and, accordingly, has acted in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has shown that it has registered rights in the Trade Mark. The Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety. The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights.
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Mark as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name redirects to a website where services are offered which compete with those offered by the Complainant under the Trade Mark, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
Based on the information and the evidence provided by the Complainant, the Panel finds that the Respondent registered the Domain Name in bad faith, since at the time of registration it was or should have been aware of, and indeed specifically targeted, the Complainant and the Trade Mark. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 3 years after the registration of the Trade Mark; (ii) the use of the Domain Name to redirect Internet Users to the website of a competitor of the Complainant; (iii) the VEDA mark is not a dictionary term, nor a term of which it is likely that a registrant would spontaneously think of at the time of registration of the Domain Name; (iv) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Mark.
The Panel also finds that the Respondent is using the Domain Name in bad faith, in particular since (i) the Domain Name redirects Internet users to the website of a competitor of the Complainant; (ii) the Respondent tried to hide its identity through the use of a privacy service; and, (iii) the Respondent did not file a Response.
Based on these circumstances, the Panel concludes that the Complainant has established that the Respondent has registered and is using the Domain Name in bad faith.
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 <vedaetrace.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: September 11, 2020
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