Equifax uses EFX as its stock ticker symbol. On that basis, it filed a UDRP action against Future Media Architects over the domain name EFX.com. See Equifax Inc. v. Future Media Architects Inc., NAF Claim Number 1195133 (Jul. 23, 2008). Equifax was not successful, but this decision gives some guidance to parties whose “trademark” rights may be less than a traditional brand name, but are still worthy of protection.
Three-letter domain decisions are hard to win. There are often a multitude of plausible explanations as to why the Respondent registered the domain name in good faith, even if the Respondent is using the domain name in bad faith. In this case, the Complainant was unsuccessful because the panelist believed that the Respondent did not register or use the domain in bad faith. This doesn’t make the case worthy of blog space.
What is worthy of note in this case is that the panelist recognized that a complainant’s “rights” under the UDRP are not strictly limited to brand names. Under article 4(a)(i) of the UDRP, the complainant must prove that the domain name at issue is “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” The Panelist in this case interpreted that element broadly – encompassing rights that seem more like analogous use than trademark rights.
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.
Accordingly, while Equifax failed to convince the panelist of the Respondent’s intention, it did convince the panelist that a company need not use a mark as a brand name in order to have UDRP-recognized rights.