US registration mark	Trademark	Class(es) of goods & services	Date of registration
1,027,544	EQUIFAX	36	December 16, 1975
1.045,574	EQUIFAX	35	August 3, 1976
1,644,585	EQUIFAX	35, 36 and 42	May 14, 1991

4.A.6 All three registrations were first used in commerce on March 4, 1975.

4.A.7 US1,644,585 covers the provision of credit information relating to consumer or commercial applicants for, inter alia, mortgage loans [Class 36] and the provision of on-line access to computer databases containing information relating to applicants for, inter alia, mortgage loans [Class 42].

4.A.8 The Complainant is also the registrant of the domain name <equifax.com> which was created on May 2, 2005.

EQUIFAX Mortgage Solutions

4.A.9 The Complainant’s “EQUIFAX Mortgage Solutions” business provides credit reporting, marketing and analytical services to assist mortgage market players with targeting and closing the right customers and buying and selling the right securities. The Complainant’s webpage for its EQUIFAX Mortgage Solutions business is accessed through its website at “www.equifax.com/mortgage”. That business was launched in 1998.

4.B. The Respondents

4.B.1 In the absence of a Response, all that is known of the Respondents is information contained in the Complaint and its annexes.

4.B.2 Both Moniker Privacy Services and Pablo Palermao have been Respondents in a number of Decisions under the Policy. The Complaint identifies 33 such Decisions where Moniker Privacy Services has been Respondent and the Amended Complaint identifies 6 such Decisions where PabloPalermao has been Respondent.

4.B.3 The Complaint exhibits the webpage to which the disputed domain name resolves. This is entitled “Welcome to equifaxmortgage.com for resources and information on Credit Reports and Mortgage”. The site contains links to, inter alia, “Mortgages: Mortgage Loans: Best Mortgage: Mortgage Rates: Buy Mortgage: Cheapest Mortgage; and Mortgage Financing”.

5. Parties’ Contentions

5.A Complainant

Confusing Similarity: Policy paragraph 4(a)(i)

5.A.1 Complainant says that the disputed domain name is confusingly similar to its EQUIFAX trademark. The suffix “mortgage” is merely descriptive of services which the Complainant offers [see, paragraph 4.A.9 above] and the Respondent also provides links to [see, paragraph 4.B.3 above]. The Complaint cites decisions under the Policy where the mere addition of a descriptive suffix to the Complainant’s trademark has been found to give rise to confusing similarity. For example, Gateway Inc .v. Exotic Design Group, WIPO Case No. D2008-0051 where the domain name in issue was <gatewaylaptops.com> and Elizabeth Taylor Cosmetics Company .v. NOLDC, Inc, WIPO Case No. D2006-0800 where the domain name in issue was <elizabethtaylorperfume.com>.

Rights or Legitimate Interests in the Disputed Domain Name: Policy paragraph 4(a)(ii)

5.A.2 As to rights and legitimate interests, the Complainant says that the Respondents cannot bring themselves within any of the circumstances set out in paragraph 4(c) of the Policy. Nor can the Respondents show that they have been licensed or otherwise authorized by the Complainant to use the EQUIFAX trademark.

5.A.3 The use the Respondents have made of the disputed domain name is described in paragraph 4.B.3 above. That use competes directly with the Complainant’s EQUIFAX Mortgage Solutions business described in paragraph 4.A.9 above. In the light of the Complainant’s trademark rights in the EQUIFAX mark (first used and registered in 1975) and the Complainant’s EQUIFAX Mortgage Solutions business established in 1998 – some 6 years before the disputed domain name was created – the Complainant says the Respondents’ use of the disputed domain name cannot be either a bona fide or a legitimate non-commercial or fair use of that domain name. The Respondents’ use is clearly to derive financial gain by misleadingly diverting consumers to its website.

5.A.4 Again, the Complaint cites decisions under the Policy wherein comparable circumstances of such use by a Respondent has been found to be neither bona fide nor a non-commercial or fair use of the disputed domain name.

5.A.5 The Complaint also cites decisions under the Policy where by reason of the absence of trademark or service mark rights and lack of evidence, Respondents have been found not to have become commonly known by the disputed domain name. Here, the Complainant asserts that there is no evidence of circumstances whereby the Respondents could establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii) of the Policy.

Registered and Used in Bad Faith: Policy paragraph 4(a)(iii)

5.A.6 As to registration and use in bad faith, the Complainant relies on the circumstances set out in paragraphs 4(b)(ii), (iii) and (iv) of the Policy being present on the facts of this case.

5.A.7 As to the “pattern of conduct” requirement of paragraph 4(b)(ii), the Complainant cites the 33 cases under the Policy where Moniker Privacy Services has been Respondent and 6 such cases where Pablo Palermao has been Respondent.

5.A.8 As to paragraph 4(b)(iii) of the Policy, the Complainant says that the Respondents’ use of the disputed domain name for the purpose of offering services competitive to the Complainant’s EQUIFAX Mortgage Solutions business is clearly designed to disrupt that business.

5.A.9 As to paragraph 4(b)(iv) of the Policy, the Complainant again relies on the website to which the disputed domain name resolves as demonstrating an intentional attempt to attract Internet users by creating a likelihood of confusion with the Complainant’s EQUIFAX trademark.

5.A.10 In respect of these subsections of paragraph 4(b) of the Policy, the Complainant cites decisions under the Policy supportive of its assertion that the facts of this case plainly establish bad faith registration and use by the Respondents.

5.B Respondents

As noted, no Response has been submitted.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondents’ rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has established registered trademark rights in EQUIFAX dating from 1975. Mere addition of the descriptive suffix “mortgage” to the Complainant’s registered trademark EQUIFAX as the prefix does not avoid confusing similarity. The disputed domain name incorporates the Complainant’s EQUIFAX trademark in its entirety and that is the dominant feature of the disputed domain name. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.6 There is no evidence to suggest that the Respondents could provide evidence of rights or a legitimate interest in the disputed domain name. For the reasons set out in paragraphs 5.A.2 and 5.A.5 above, the Panel finds that the Complainant has demonstrated that none of the circumstances set out in paragraph 4(c) of the Policy apply in this case. Accordingly, the Complainant has established the requirement of paragraph 4(a)(ii) of the policy.

Registered and Used in Bad Faith

6.7 As to the “pattern of conduct” requirement of paragraph 4(b)(ii) of the Policy, the Panel has reviewed 2 of the 33 Decisions involving Moniker Privacy Services cited in the body of the Complaint and the 6 cases involving PabloPalermao cited in the Amended Complaint. In all of those, the Complaints succeeded. On the evidence proffered and exhibited to the Complaint, the Panel finds circumstances present in this case establishing registration of the disputed domain name under this paragraph of the Policy.

6.8 As to paragraphs 4(b)(iii) and (iv) of the Policy, for the reasons set out in paragraphs 5.A.8 to 5.A.10 above, the Panel also finds circumstances present in this case establishing bad faith registration and use of the disputed domain name under those paragraphs of the Policy.

6.9 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <equifaxmortgage.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Date: May 21, 2008

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-0506.html

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