The Complainant is Government Employees Insurance Company (“GEICO”) of Washington, District of Columbia, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Haimin Xu of Wuxi, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC 1190 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2018.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 28, 2018. 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 an American insurance company, which provides various types of insurance services including, among others, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, and overseas or international insurances. It has operated in the insurance market sector for almost 80 years, since 1936, trading under the mark GEICO, which is based on its company name acronym.
The Complainant uses the mark GEICO to identify and promote its services, holding several trademark registrations for this mark, alone or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:
United States Trademark No. 763274 GEICO, registered on January 14, 1964, in class 35 and 36;
United States Trademark No. 2601179 GEICO, registered on July 30, 2002, in class 36;
United States Trademark No. 1442076 GEICO DIRECT, registered on June 9, 1987, in class 16;
United States Trademark No. 2071336 GEICO DIRECT, registered on June 17, 1997, in class 36;
The Complainant also owns a domain name comprising its trademark GEICO, which is linked to its corporate website used in connection to its services, registered on July 22, 1995.
The Respondent appears to be a Chinese individual.
The disputed domain name was registered on July 15, 2018 by the Respondent. It resolves to various rotating third parties’ websites links, via redirection, none of them affiliated with or authorized by the Complainant. 5. Parties’ Contentions A. Complainant
Key contentions of the Complaint may be summarized as follows:
Thought its extensive use of GEICO mark, as well as large sums invested in promotion through television, print media and Internet advertising campaigns, its trademark has acquired reputation.
The disputed domain name incorporates a common or obvious misspelling of its GEICO trademark, being substantially identical, adding only one letter “e” and a generic Top-Level Domain (“gTLD”). It is a deliberate misspelling confusingly similar to the Complainant’s trademark, which constitutes an obvious typosquatting case. Visually the disputed domain name is so close to the Complainant’s trademark that confusion is inevitable between them.
There is no evidence that the Respondent has any legitimate interests to the disputed domain name, and any current or conceivable future uses of it violate the Policy. The Respondent has no connection or affiliation with the Complainant or its trademarks, it has not received any license or consent, express or implied, to use GEICO mark, and there is no evidence that it is commonly known by the disputed domain name. The use of the disputed domain name to redirect to third party websites is not a legitimate interest. Furthermore, the Respondent’s misappropriation of its notorious mark deliberately seeks to create an impression of an association with the Complainant and its trademark.
The Respondent has registered the disputed domain name in bad faith with knowledge of the Complainant’s famous trademark, and with an intent to profit off its rights. As the GEICO trademark has been extensively advertised in television, it is inconceivable that the Respondent was unaware of it. Further, the Respondent is deemed to have constructive notice of the Complainant’s trademark rights because a simple Internet search would have revealed its extensive use of GEICO as a source identifier, and its trademark rights would also been obvious through a basic domain name search or a trademark search of the United States Patent and Trademark Office (“USPTO”) records.
Corroborates the disputed domain name bad faith registration that it was offered for sale for a price amounting to USD 10,000, which suggests that the Respondent was aware of the Complainant’s trademark and its business when was registered the disputed domain name, having the intention of obtaining a financial gain, in bad faith. Further, the Respondent’s answer to its cease-and-desist letter was to request the payment of USD 500 in order to transfer the disputed domain name, which exceeds the out-of-pocket expenses directly related to its registration. In addition, the disputed domain name was blocked through a warning page by Sophos Web Protection. All these circumstances are a strong indication that the disputed domain name is used in bad faith.
The Respondent is using and has used the disputed domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion for commercial gain, tarnishing and infringing the Complainant’s trademarks, reputation and goodwill. The disputed domain name is used to redirect users to various non-affiliated-third-party websites, including competitor’s websites featuring services related to the same market sector of the Complainant. Such use is tantamount to bad faith. Furthermore, there is no conceivable or contemplated use of the disputed domain name (which wholly incorporates the Complainant’s trademark) that would not be an infringing use in violation of the Policy.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel of a sole Panelist has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties. A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the Policy. See section 1.7 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark GEICO. The disputed domain name incorporates this mark in its entirety adding only one letter “e” and a gTLD. The Complainant’s mark is recognizable in the disputed domain name, and the gTLD “.com” has no distinctive meaning that may avoid the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent has not been authorized to use its trademark GEICO. Furthermore, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain name, has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complaint.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The evidence provided by the Complainant shows that the disputed domain name is linked to various rotating websites, via redirection, none of them affiliated with or authorized by the Complainant.
The disputed domain name is almost identical to the Complainant’s trademark, differing only in one of its letters, having an additional letter “e”. The Panel considers that this minor change constitutes a misspelling that intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation. The Panel also notes the extensive presence of the trademark GEICO over the Internet and its extensive use in United States and Mexico, providing as well international insurance services for cars, motorcycles and personal property.
It is remarkable that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name. Further, no information about the owner of the disputed domain name or any reference to the absence of affiliation with the Complainant and its trademark is provided in the websites to which the disputed domain name is linked.
It is further remarkable the Respondent’s reaction the Complainant’s cease-and-desist letter, requesting the payment of a sum that exceeded the out-of-pocket costs of the disputed domain name registration (USD 500), instead of adducing and justifying any legitimate rights or interests in its registration.
All these circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration or its acquisition by the Respondent, this Panel considers unlikely that the Respondent did not know about the GEICO trademark and did not have it in mind. Several factors in this case lead to this conclusion, namely (i) the extensive use of the GEICO trademark in United States over nearly 80 years, since 1936, providing international coverage insurance services, including in China (where the Respondent is located), (ii) the extensive presence of GEICO mark over the Internet, (iii) the inherent distinctive character of the GEICO trademark and its promotion through television and other media advertising campaigns, and (iv) its identical reproduction in the disputed domain name, only adding a letter “e”.
This conclusion is corroborated by the disputed domain name’s current use resolving to various rotating third-parties websites links, via redirection, some of them related to the Complainant’s same market sector, (insurance services), and owned by its competitors.
Other cumulative circumstances of this case may indicate the Respondent is acting in bad faith, in particular
(i) its absence of response, not providing any evidence of actual or contemplated good faith use, (ii) its reply to the Complainant’s cease-and-desist letter requesting the payment of a sum that exceeded the out‑of‑pocket costs of the disputed domain name registration (USD 500) instead of adducing and justifying any legitimate rights or interests in its registration, and (iii) the fact that the disputed domain name was blocked through a warning page by Sophos Web Protection.
The Policy’s non-exhaustive list of circumstances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or […]
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel considers that the selling offer for a price that clearly exceeds its out-of-pocket registration costs (USD 10,000), as well as the Respondent’s reaction to cease-and-desist letter offering the disputed domain name transfer for a price that also exceeds its out‑of‑pocket registration costs (USD 500), are a clear indication of the circumstances described in paragraph 4(b)(i) of the Policy.
In addition, the Panel notes that the nature of the disputed domain name (incorporating the Complainant’s mark differing only in one letter) is a misspelling that could easily cause confusion, which may constitute a deliberate typosquatting case. This Panel considers highly probable it was registered or acquired by the Respondent and was used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, misleadingly attracting Internet users to the Respondent’s website, and disrupting the Complainant’s business.
All the above-mentioned lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered or acquired and is using the disputed domain name in bad faith under the third element of the Policy. 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.
Reyes Campello Estebaranz
Sole Panelist
Date: January 7, 2019
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