WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Henry Chan
Case No. D2004-0129
1. The Parties
The Complainant is Government Employees Insurance Company, Washington, District of Columbia, United States of America, represented by Arnold & Porter LLP, United States of America.
The Respondent is Henry Chan, Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2004. On February 19, 2004, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the subject domain names. On February 19, 2004, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2004.
The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on April 29, 2004. The Administrative 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
The following information derives from the Complaint.
The Complainant is a well-known insurance company that has provided insurance services since 1936. It offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. In connection with these services, the Complainant also offers emergency roadside assistance.
The Complainant has obtained numerous federally registered trademarks in the United States and service marks in connection with its goods and services (the "GEICO marks"). The United States Patent and Trademark Office ("USPTO") has granted federal trademark registrations to the Complainant in numerous classes of goods and services, including the following, without limitation:
Mark
International Class
Registration No.
Registration Date
GEICO DIRECT
36
2,628,333
October 1, 2002
GEICO
36
2,601,179
July 30, 2002
GEICO DIRECT LINE
36
2,422,414
January 23, 2001
GEICO THE SENSIBLE ALTERNATIVE
36
2,071,507
June 17, 1997
GEICO DIRECT
36
2,071,336
June 17, 1997
GEICO DIRECT
16
1,442,076
June 9, 1987
GEICO
36
763,274
January 14, 1964
The Complainant has made extensive use of the GEICO marks in connection with its services. The company invests large sums to promote and develop its marks through television, print media and the Internet. Through its widespread, extensive use in connection with insurance, the GEICO's marks have become uniquely associated with the Complainant and its services. The Complainant has over 5.3 million customers and insures more than 8.6 million vehicles. It also has twelve major offices throughout the United States, 22,000 associates and is the fifth largest private-passenger auto insurer in the country.
In connection with its insurance services, the Complainant has established a website located at "," which also is accessible through other domain names owned by the Complainant including, but not limited to "." The "" website enables computer users to access information regarding the Complainant's insurance services, to learn more about it and to get insurance quotations.
The Complainant also maintains a website at "." At this website it provides information on special offers available to the Complainant's customers. The "" website includes information on car privileges, home privileges, family privileges, and leisure privileges.
The Complainant recently became aware that the Respondent had registered the subject domain names and was using them to promote and advertise websites offering for sale insurance products by the Complainant's competitors.
When an Internet user types any of the subject domain names into the address bar an Internet browser, the user is directed to a generic website that provides links to various websites, including links to websites offering insurance services that compete with the Complainant's insurance services.
Furthermore, when Internet users arrive at the Respondent's websites, they also are confronted with numerous, changing pop-up advertisements.
Currently, the only difference between the various websites associated with the subject domain names appears to be the change in the text in the upper-right hand portion of the site, which may say, for example, "G" or "G."
Previously, the website associated with the domain name differed from the sites associated with the other domain names. The domain name used to point to a simplistic search directory with categories for "Gambling," "Love," and "Gifts," among other things. Moreover, the "Gambling" category listed links such as "Online Gambling," "Casinos," and "Blackjack," among others.
The Respondent has registered a plethora of infringing domain names in addition to the subject domain names. Examples include many domain names that capitalize on variations and misspellings of trademarks, including the following, among others: , , , , , , , , , , , , , , and .1
The Respondent has been named in at least twelve UDRP administrative proceedings requiring the transfer of domain names comprised of misspellings or variations of well-known trademarks. See Harcourt, Inc. v. Henry Chan, NAF Claim No. 214531 (January 14, 2004) (ordering the transfer of the domain name ); Popular, Inc. v. Henry Chan, NAF Claim No. FA183739 (October 6, 2003) (ordering the transfer of the domain name ); The Sports Authority Michigan Inc. v. Henry Chan, NAF Claim No. FA176552 (September 15, 2003) (ordering the transfer of the domain names , , , and ); Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September 7, 2003) (ordering the transfer of the domain name ); Rock Financial v. Chan, NAF Claim No. FA167917 (August 15, 2003) (ordering the transfer of the domain name ); American Stores Co. v. Henry Chan, NAF Claim No. FA161567 (July 24, 2003) (ordering the transfer of the domain name); Reed Elsevier Inc. v. Henry Chan, NAF Claim No. FA161468 (July 23, 2003) (ordering the transfer of the domain name); Yahoo! Inc. et al., NAF Claim No. FA162050 (ordering the transfer of over 70 domain names incorporating variations of or misspellings of the complainants' marks); Bedford Fair Apparel, Inc. v. Henry Chan, Claim No. FA157322 (June 20, 2003) (ordering the transfer of the domain name); Pioneer Hi-Bred Int'l Inc. v. Henry Chan, NAF Claim No. 154119 (May 12, 2003) (ordering the transfer of the domain name ); LTD Commodities LLC v. Henry Chan, NAF Claim No. FA152617 (May 8, 2003) (ordering the transfer of the domain names , , , , , , and ); Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (March 2003) (ordering the transfer of the , , and domain names). The Panels in all of these proceedings held that the Respondent registered and used domain names in bad faith. In fact, one UDRP Panel has characterized the Respondent as a "habitual typosquatter." Harcourt, Inc., NAF Claim No. 214531.
The Respondent has not received any license or consent, express or implied, to use the GEICO marks in a domain name or in any other manner.
The Respondent has never been known by any of the subject domain names.
5. Parties' Contentions
A. Complainant
The Complainant relies on its use and registration of the word "GEICO" and contends that all of the subject domain names are confusingly similar.
The websites to which the subject domain names resolve merely act as simplistic search engines that include links and advertisements for competitor websites. Such a use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
The Complainant has not attempted to resolve this matter informally due to the Respondent's status as a notorious cybersquatter. Although numerous administrative proceedings have been brought against the Respondent for its bad faith registration of domain names, he repeatedly failed to appear.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy the Complainant must address whether the subject domain names are: (i) identical or confusingly similar to the Complainant's marks; (ii) the legitimacy of the Respondent's interest in the subject domain names; (iii) bad faith in the context of the registration and use of the subject domain names.
The Complainant refers to a number of UDRP Panel decisions. While these are neither controlling nor binding on the Panel, reference to them often can be of assistance.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the word "GEICO". It contends that all of the subject domain names are confusingly similar, although concerning some of them, it asserts that they are "identical or confusingly similar". These are separate allegations which require a complainant to meet different criteria. The Panel proceeds to consider whether the subject domain names are confusingly similar.
The subject domain names all incorporate the word "GEICO". It is derived from the Complainant's name and has no independent meaning. Prima facie there is a likelihood of confusion.
The domain name merely adds the word "auto", which considering the Complainant's business adds to the likelihood of confusion.
The domain names and merely add the word "privileges", albeit misspelled, a misspelling that is not readily apparent. The Complainant operates a website at "", which presumably resolves from the domain name .
The domain name again uses a subtle misspelling. This time of the Complainant's mark.
The domain names and merely add generic words to the Complainant's mark.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent is not authorized to use the subject domain names or the Complainant's marks. In part, he has used the marks specifically to direct Internet users to products that compete with the Complainant. While competition per se is legitimate, the unauthorized use without qualification of another's mark to further that objective is not.
The Respondent does not appear to be known by or to be associated with any legitimate business which uses the Complainant's marks or the subject domain names.
The fact that the Respondent has been involved in a number of similar situations also is some evidence that supports a conclusion that he does not have a legitimate interest in the subject domain names.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The fact that a Respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that support such a finding may be relevant to the bad faith inquiry.
A Respondent is not obliged to participate in a domain name dispute, but if it were not to do so, it would be open to the inferences that legitimately flow from the reasonable assertions of fact of a Complainant.
The word "GEICO"has no meaning other than as a derivation from the Complainant's name. The Respondent's registration and use, suggests bad faith. Directing Internet users to the products of the Complainant's competitors reinforces the suggestion. It is compounded by the lack of any link by the Respondent to the subject domain names or the mark.
The use of subtle misspellings can raise an inference of bad faith. In this case the number of domain names which contain subtle misspellings further supports a conclusion of bad faith.
Also relevant is the Respondent's extensive history of abuse of domain names.
A clear inference of bad faith registration and use is present in this case and the Respondent has done nothing to supplant it.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
7. Decision
Based on the information provided to it and on its findings of fact, the Panel concludes that the Complainant has established its case.
The Complainant seeks transfer to it of the subject domain names. The Panel so orders.
Edward C. Chiasson Q.C.
Sole Panelist
Dated: May 13, 2004
1 The Respondent has registered many of these domain names using a different postal address, located in Kowloon, Hong Kong. GEICO, however, submits that Respondent is in fact the same Henry Chan as the Henry Chan allegedly located in Kowloon, Hong Kong. In fact, one administrative panel has already determined that Respondent and the Henry Chan located in Kowloon, Hong Kong are in fact the same person. See Yahoo! Inc. et al. v. Henry Chan, NAF Claim No. FA162050 (July 16, 2003).
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