The Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is patrick schroeder of Santa Barbara, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On January 3, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 4, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2012 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 amended Complaint on January 10, 2012. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 1, 2012.
The Center appointed Dennis A. Foster as the sole panelist in this matter on February 6, 2012. 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
The Complainant is a large United States insurance company that has been in operation since 1936. It owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for its GEICO service mark (e.g.: Registration No. 763274; issued January 14, 1964; and Registration No. 2601179; issued July 30, 2002).
The Respondent is the registrant of the disputed domain name, , and according to the publicly available WhoIs database, registered it on June 9, 2011. The disputed domain name is used to host a website that, while containing references to the Complainant’s services, provides links to the websites of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
- Founded in 1936, the Complainant is a well-known United States insurance company with over 24,000 employees. As the fastest growing auto insurer in the United States, the Complainant has more than 9 million customers and insures in excess of 16 million vehicles.
- The Complainant has obtained numerous service mark registrations with the USPTO for its GEICO mark. The Complainant has expended significant sums to develop and promote its services under that mark, and includes the use of a website at its domain name, , for those purposes.
- When the Complainant discovered the existence of the disputed domain name, the Complainant sent a letter to the Respondent requesting a transfer of the same, but never received a reply.
- The disputed domain name, , is confusingly similar to the Complainant’s GEICO mark. The addition of the short term “ins” does not mitigate any confusion, especially as that term is simply an abbreviation for the word “insurance”, which describes the Complainant’s principal business.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has received no license or consent, express or implied, to use the GEICO mark in any manner. Moreover, there is nothing to suggest that the Respondent is commonly known by the disputed domain name.
- The Respondent uses the disputed domain name to collect pay-per-click revenue by providing a website at the name that refers to the Complainant’s services and furnishes links to the websites of the Complainant’s competitors. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of that name. Moreover, the Respondent has been found in a prior UDRP case to lack rights or legitimate interests in another domain name that it registered. The Respondent’s creation of a “look-a-like” website, similar to the Complainant’s, is further evidence of the Respondent’s lack of rights and legitimate interests in the name.
- The Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s service marks. The Respondent, apparently a United States resident, would have gained this knowledge simply through the Complainant’s extensive advertising of services under its GEICO service mark. Moreover, the Complainant’s USPTO service mark registrations, among other things, would have given the Respondent constructive knowledge of the Complainant’s rights in said marks.
- The Respondent also uses the disputed domain name in bad faith. The Respondent’s use of the name amounts to some promotion of the Complainant’s services, but also provides links to the websites of the Complainant’s competitors. Furthermore, the Respondent has exhibited a pattern of bad faith behavior with respect to at least one other domain name. B. Respondent
- The Respondent did not reply to the Complaint. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find that the Complainant has succeeded in this proceeding and should be eligible to obtain transfer of the disputed domain name, , provided the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In light of the evidence submitted by the Complainant (Annex D) that it owns valid USPTO registrations for the GEICO service mark, the Panel concludes that the Complainant possesses sufficient rights in that mark to satisfy Policy paragraph 4(a)(i). See, LF, LLC v. Ryan Bertalotto, NAF Claim No. FA0706001000013 (“The Panel finds that Complainant’s registration with the USPTO sufficiently establishes its rights in the LOWE’S mark pursuant to Policy [paragraph] 4(a)(i).”); and Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503 (“Complainant’s registration of the “NAUGA” marks on the Principal Register at the [US]PTO establishes a presumption of their validity in U.S. law.”)
The disputed domain name, , merely adds the three-letter term “ins” as well as the insignificant generic top-level domain “.net” to the Complainant’s GEICO mark. The Panel notes that “ins” serves as a common abbreviation for the word “insurance,” which describes exactly the primary business of the Complainant. Thus, the disputed domain name contains the Complainant’s entire mark and references the Complainant’s business, making the name confusingly similar to that mark in the Panel’s opinion. See, Allstate Insurance Company v. Customer ID 12313697771467 / Global Access, domain admin,WIPO Case No. D2010-2164 (finding the disputed domain name, to be confusingly similar to the ALLSTATE mark.); Accor v. Maixueying Jokemine,WIPO Case No. D2010-2233 (finding confusingly similar to the ACCOR mark and opining, “Considering that the Complainant operates in the hotel business, the Panel concludes that the addition of the term ‘hotel’ even heightens the similarity between the disputed domain name and the Complainant’s trademark.”); and Isleworth Land Company v. Lost in Space, SA, NAF Claim No. FA0208000117330 (“ [ . . . ] it is a [sic] well established principle that generic top-level domains are irrelevant when conducting a Policy [paragraph] 4(a)(i) analysis.”).
The Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant contends that the Respondent uses the disputed domain name to host a website that provides links to websites of the Complainant’s competitors. The Panel finds that this use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, meaning that paragraphs 4(c)(i) and (iii) of the Policy fail to apply in support of any claim by the Respondent to rights or legitimate interests in the disputed domain name. See, VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925 (“The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use.”); and Apagor Distribution S.A.S. v. Richard J.,WIPO Case No. D2006-1567 (“ [ . . . ] the hyperlinks forwarding to websites operating [ . . . ] in direct competition to those of the Complainant, and to which the disputed domain name is pointing is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a non-commercial or fair use under paragraph 4(c)(iii) of the Policy”). As the Respondent did not reply to the Complaint, the Panel will accept the Complainant’s contention in this respect and conclude that said paragraphs are indeed inapplicable in this case. See, Capitol News Company, LLC v. Jason Brown,WIPO Case No. D2010-0403 (“Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to ‘decide the dispute based on the complaint’.”); and RX America, LLC. v. Matthew Smith;WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant:”)
The Panel also concludes that there is nothing in the record to suggest that the Respondent, Patrick Schroeder, or any company that it might own, has been commonly known as , rendering paragraph 4(c)(ii) of the Policy inapplicable to this case.
The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has demonstrated to the Panel’s satisfaction that it owns a service mark confusingly similar to the disputed domain name and has contended – without contradiction from the Respondent – that no license or authority was given the Respondent to use that name. In the absence of any effective rebuttal in the record or by the Respondent, and considering the inapplicability of paragraph 4(c) of the Policy as noted above, the Panel finds that the prima facie case must prevail.
Accordingly, the Panel rules that the Complainant has succeeded in showing that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds nothing in the record to contradict the Complainant’s evidence-supported contention that the Respondent uses the dispute domain name, which has been found above to be confusingly similar to the Complainant’s GEICO service mark, for a website that furnishes links to the sites of the Complainant’s competitors on a pay-per-click basis. Therefore, the Panel believes that the Respondent is gaining commercially by intentionally attracting internet users through the creation of likely confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Consequently, the Panel believes that the Respondent’s actions fall within the bad faith circumstance delineated in paragraph 4(b)(iv) of the Policy. See, General Motors LLC v. Sefa Yapici,WIPO Case No. D2010-2230 (“The website at the disputed domain name has been set up to provide links to websites of the Complainant’s competitors, no doubt on a “pay per click” basis [ . . . ] the Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.”); and Nike, Inc., Converse Inc. and Hurley International LLC v. Transure Enterprise Ltd c/o Host Master, NAF Claim No. FA1002001308870 (“The Panel also finds the Respondent use of confusingly similar domain names to attract Internet users seeking Complainant’s services and then diverting them to websites containing links to third-party competing websites is evidence of bad faith registration and use under Policy [paragraph] 4(b)(iv).”).
As a result, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith. 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, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: February 20, 2012
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