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 Jerome Crawford of St. Petersburg, Florida, United States, self-represented. 2. The Domain Names and the Registrar
The disputed domain names and (individually, a “Domain Name” and, collectively, the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by e-mail 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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. On February 18, 2019, the Respondent requested an extension of the Response due date and also sent an informal e-mail communication. On the same date, the Center granted the Respondent an additional four calendar days to respond. The Response was filed with the Center on February 22, 2019.
On February 26, 2019, the Complainant requested to suspend the proceeding for seven days. On February 27, 2019, the Center notified the Parties that the proceeding was suspended until March 6, 2019. On March 4, 2019, the Complainant requested to suspend the proceeding for seven more days. On March 6, 2019, the Center notified the Parties that proceeding was suspended until March 13, 2019. On March 13, 2019, the Complainant requested to reinstitute the proceeding. On March 14, 2019, the Center received an informal e-mail communication from the Respondent. On the same date, the Complainant confirmed its request to reinstitute the proceeding. On March 15, 2019, the Center notified the Parties that the proceeding was reinstituted as of that date, and that the Center would proceed to panel appointment.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on March 22, 2019. 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, Government Employees Insurance Company (“GEICO”), an American company, engages in business under the well-known acronym for its name, GEICO. GEICO is the owner of the trademark GEICO and other trademarks incorporating its GEICO acronym used in connection with its insurance services in the United States.
The Complainant owns registrations for its trademark GEICO in Class 36, for GEICO DIRECT in Classes 16 and 36, for GEICO AUTO REPAIR XPRESS in Class 36, and for GEICO MOTORCYCLE in Class 36. Its earliest registration, for GEICO, Registration No. 763,274, issued on January 14, 1964.
The Complainant owns the domain name , where it operates a web site from which it advertises and sells its motor vehicle insurance services.
The Respondent, Jerome Crawford, an individual, of St. Petersburg, Florida, United States, registered on December 21, 2018, the Domain Names, and , which, via redirection, resolve to a web site “”, which he operates and where he promotes a debit card and other services. 5. Parties’ Contentions A. Complainant
In addition to facts set forth in the Factual Background in Part 4 above, the Complainant contends, generally:
1. It is a well-known insurance company that has provided insurance services since 1936 and has been trading under its GEICO trademark for nearly eighty years.
2. It has used its mark extensively, including investing large sums to promote its mark through television, print media, and the Internet, resulting in its GEICO mark becoming a famous mark, and a powerful, and recognizable symbol of its goodwill and reputation, uniquely associated with GEICO and its services.
3. It has not authorized the Respondent to register the Domain Names.
4. The Respondent is using the Domain Names to promote some type of credit card that is not affiliated with the Complainant.
5. The Respondent demanded monetary payment in order to transfer the Domain Names, suggesting that he was looking for USD 849 to USD 1,151 per Domain Name.
6. The Respondent has used and is using the Domain Names intentionally to attract Internet users and consumers looking for legitimate GEICO services or authorized partners to the Respondent’s web site by creating a likelihood of confusion with the Complainant for commercial gain.
7. No evidence exists that the Respondent has any legitimate claims to the Domain Names and any conceivable future uses would violate the Policy.
8. The unauthorized use of the Domain Names by the Respondent infringes its GEICO marks.
Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:
1. The Domain Names fully incorporate its GEICO trademark, consisting of its GEICO mark and the addition of the generic terms “best of” and “the best of,” together with a generic Top-Level Domain (“gTLD”), which additions do not distinguish the Domain Names from its trademark.
2. The Domain Names are identical or confusingly similar to its registered marks.
Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:
1. It has not licensed or authorized, expressly or impliedly, the Respondent to use the Complainant’s GEICO mark in a domain name or in any other manner.
2. The Respondent has never been known by the Domain Name [sic].
3. The Respondent intentionally misappropriated the Complainant’s GEICO mark to create an impression of an association.
4. Using the Domain Names to redirect to a third-party web site is not a legitimate interest.
5. The Respondent has no legitimate interest in the Complainant’s GEICO mark.
Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:
1. The Respondent registered the Domain Names in bad faith with knowledge of the Complainant’s rights in its GEICO mark and with an intent to profit off of those rights.
2. The Respondent must have been aware of the Complainant’s famous registered GEICO trademark, because of GEICO’s extensive advertising featuring its name and its GEICO mark.
3. Basic Internet, domain name, or United States Patent and Trademark Office searches would have shown the Complainant’s use and made its rights obvious.
4. The Respondent had constructive notice of the Complainant’s trademark rights by virtue of its trademark registrations.
5. The Respondent’s use of the Complainant’s GEICO mark to attract Internet users without authorization is evidence of bad faith.
6. The Respondent is using the Domain Names to trade on the Complainant’s goodwill by attracting to the Respondent’s web site consumers looking for the Complainant’s GEICO products and services who might unwittingly transact business with, or rely on information provided by, the Respondent, assuming that the Respondent’s services were legitimately associated with the Complainant.
7. The Respondent’s repeated demands for an offer to purchase the Domain Names, implying that any offer must be at least, or very close to, four figures, which is several times the value of the Respondent’s documented out-of-pocket costs for the Domain Names, are a violation of the Policy, 4(b)(i), and strong evidence of bad faith registration and use.
8. No conceivable contemplated use of the Domain Names by the Respondent would not be an infringing use.
The Complainant requested transfer of the Domain Names to the Complainant. B. Respondent
In addition to facts set forth in the Factual Background in Part 4 above, the Respondent contends, generally:
1. A representative of GEICO, one of the largest insurance companies in the United States, demanded the Domain Names from the Respondent in an e-mail that the Respondent thought was spoofed.
2. He was suspicious of the representative, who did not follow-up his demand with a certified letter on company letterhead stationery, and had no reason to believe that the representative was in fact a representative of GEICO.
3. He believed, under the rules of the Internet Corporation for Assigned Names and Numbers (“ICANN”), that he could not transfer the Domain Names until sixty days after he had registered the Domain Names and the GEICO representative insisted that he violate this “60-day rule.”
4. Nevertheless, he attempted to transfer the Domain Names at his cost on January 3, 2019.
5. GEICO owns the trademark registrations claimed by GEICO, but these registrations do not include the words “the,” “best,” or “of.”
6. The Domain Names resolve, via redirection, to a web site at “”, which is a business that he operates offering a debit card and information to help sub-prime consumers start repairing their credit.
7. He has “over 240” domain names forwarding to this site.
8. He believed that the email from GEICO was spoofed and that the representative was trying to intimidate him into giving up his Domain Names.
9. He did not demand money for the Domain Names, but demanded that the person who was trying to intimidate him into giving way his Domain Names make an offer for them.
10. The GEICO representative did not even offer to cover the costs of buying, hosting, and transferring the Domain Names to GEICO.
11. He attempted to transfer the Domain Names on January 3, 2019, at his own cost, but the transfer was denied based on the “60 day rule.”
12. Nothing at his web site, “,” would lead a reasonable person to believe that it was affiliated with GEICO or any of GEICO’s subsidiaries and, therefore, no confusion exists.
13. His company “uses domain [sic] for their traffic value, to bring information to sub-prime consumers some of which could be Geico customers.”
14. Because the Domain Names are company assets used in his business, he has a legitimate claim to the Domain Names.
15. His business has 250 domain names pointing to his web site generating over 20,000 hits monthly.
Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Respondent contends:
1. The Respondent received a letter from Discover Financial Services requesting transfer of the domain name .
2. Discover had a stronger claim, with four elements of similarity, and, after understanding Discover’s concerns, he redirected the domain name in that case to a kindergarten site, which resolved the dispute.
3. GEICO is claiming only one element of similarity between GEICO’s mark and the Domain Names, and, unlike Discover’s situation, his web site has no reference to anything that GEICO sells or advertises.
Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Respondent contends:
1. His company “uses domain [sic] for their traffic value, to bring information to sub-prime consumers some of which could be Geico customers.”
2. Because the Domain Names are company assets used in his business, he has a legitimate claim to the Domain Names.
3. His business has 250 domain names pointing to his web site generating over 20,000 hits monthly.
Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Respondent contends:
1. His company registered the Domain Names “for there [sic] traffic value”, not to cause harm or mislead any reasonable person to believe that GEICO had or has any affiliation with the Respondent’s business at the web site “.”
2. His company’s past performance will show that it works with other companies to resolve disputes.
3. His company believes that GEICO was attempting to bully them into giving away a company asset.
4. His company conducted a search before he registered the Domain Names and the search showed no trademarks registered for the Domain Names.
5. His company does not sell its domain names.
6. Because of the way that the GEICO representative approached him, his company felt that GEICO’s representative was trying to con them out of “valued assets which is [sic] producing valuable traffic.”
7. His company felt that, if the GEICO representative were legitimate, GEICO would at least have offered out-of-pocket costs to transfer the Domain Names.
8. The GEICO representative demanded that the Respondent’s company transfer the Domain Names the way he demanded, and not follow the ICANN “60-day rule.”
9. Even though he knew about the “60-day rule,” his company made a good faith effort to transfer “the domain” [sic] but the transfer was declined based on the rules, which showed that the GEICO representative may not have been legitimate, because he did not know the rules associated with domain name transfers.
10. He is in no way in bad faith.
11. His company’s use has not and does not violate the GEICO trademark.
12. His company would like to keep the Domain Names, but is willing to enter into a settlement that would satisfy GEICO and his company. 6. Discussion and Findings A. Multiple Domain Names in One Proceeding
The Complainant has initiated this administrative proceeding against the Respondent for the registration and use of two domain names and has requested the transfer of both Domain Names to the Complainant. Because a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, Rules, paragraph 3(c); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, the Panel finds that this is proper. Facebook Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433. B. Elements of a Claim
The Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). (i) Domain Name Identical or Confusingly Similar to the Complainant’s Trademark
To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Names are identical or confusingly similar to this trademark.
The Panel finds that the Complainant’s trademark registrations in the United States establish its trademark rights. WIPO Overview 3.0, section 1.2.1; Government Employees Insurance Company v. Mike Rummens, Caller DNA,WIPO Case No. D2016-2468; Government Employees Insurance Company v. Ronald Grero,WIPO Case No. D2013-2048; Government Employees Insurance Company v. Fundacion Private Whois,WIPO Case No. D2013-1790; Government Employees Insurance Company (“GEICO”) v. Diamond Point Enterprises Limited,WIPO Case No. D2012-1487; Government Employees Insurance Company v. Michael Gonzalez,WIPO Case No. D2011-1130; Government Employees Insurance Company v. Eric Ehmer,WIPO Case No. D2011-0035; Government Employees Insurance Company (GEICO) v. Forum LLC,WIPO Case No. D2005-1131.
The Respondent contends that GEICO does not have a trademark registration for “bestofgeico” or “thebestofgeico”. In a proceeding under the Policy, to prove the first element of a claim, that a disputed domain name is identical to or confusingly similar to a trademark, the issue is not whether a complainant has a trademark registration that is identical to the disputed domain name. It is enough that a disputed domain name is confusingly similar to a trademark in which a complainant has rights. Policy, paragraph 4(a)(i).
The Panel has also considered the Respondent’s argument that the trademark GEICO is only one of three or four elements in each of the two Domain Names. Nevertheless, the Panel finds that the Domain Names are confusingly similar to the Complainant’s GEICO trademark. The Domain Names incorporate the entire GEICO trademark, the GEICO trademark is easily recognizable within the Domain Names, and the GEICO trademark is the predominant element in each of the Domain Names. WIPO Overview 3.0, section 1.7; Government Employees Insurance Company v. Mike Rummens, Caller DNA, supra; Government Employees Insurance Company v. Ronald Grero, supra; Government Employees Insurance Company v. Fundacion Private Whois, supra; Government Employees Insurance Company (“GEICO”) v. Diamond Point Enterprises Limited, supra; Government Employees Insurance Company v. Michael Gonzalez, supra; Government Employees Insurance Company v. Eric Ehmer, supra; Government Employees Insurance Company (GEICO) v. Forum LLC, supra.
Accordingly, the inclusion of the generic phrases “best of” and “the best of” within the Domain Names does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.
In Government Employees Insurance Company v. Fundacion Private Whois, supra, which involved the disputed domain name , the panel found that “The trademark GEICO is distinctive” and that “The Complainant’s trademark is very distinctive, and the combination with the word “trust” does not form a word or concept with a primary meaning or message different than [sic] the Complainant’s trademark.” Other panels have made similar findings. Government Employees Insurance Company v. Mike Rummens, Caller DNA, supra (“[T]hat the disputed domain name starts with “cheapneasy” does nothing to diminish confusion as remains confusingly similar to the GEICO mark.”)
Lastly, the inclusion of the gTLD “.com” is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11.
Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Names are confusingly similar to a trademark in which it has rights. (ii) Rights or Legitimate Interests in the Domain Name
The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, its 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Policy, paragraph 4(c).
The Panel finds, and the Respondent does not contend otherwise, that the Complainant’s trademark rights precede the registration of the Domain Names by many years.
The Respondent does not contend that he or his company has been commonly known by the Domain Names, or that he is making a noncommercial use of the Domain Names. On the contrary, the Respondent admits that he is making a commercial use of the Domain Names.
The Panel finds, on the basis of the evidence, including evidence that the Respondent submitted that his company’s name is “The Co Op Group Intl, LLC,” that (1) the Respondent is not a dealer or licensee of the Complainant; (2) the Complainant has not otherwise authorized the Respondent to use its trademark, including to register or use the mark in a domain name; (3) the Respondent has not used the trademark in a company name; and (4) the Respondent has not established any rights by common usage or any other legal rights in any name corresponding to the trademark. Rules, paragraphs 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
For these reasons, the Complainant has shown, prima facie, that the Respondent lacks rights or legitimate interests in the Domain Names.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1. If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; Sperre Mek. Verksted AS v. Perfect Privacy, LLC / The Allied Valve Spares Mfg. Co.,WIPO Case No. D2018-2904; WestJet Airlines Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Axdalinescu,WIPO Case No. D2018-2424; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
Here, instead of rebutting the showing that the Respondent lacks rights or legitimate interests in the Domain Names, the Respondent has stated in his Response, twice, in the exact same words, that “My company uses domain [sic] for their traffic value, to bring information to sub-prime consumers some of which could be Geico customers. Because the TLD’s are company assets used in our daily business there is a legitimate claim to the disputed TLD’s. Again we have 250 TLD pointing to GetTheBlackC generating over 20k hits monthly.” In other words, the Respondent has admitted that he deliberately uses the Domain Names for the purpose of generating traffic for his web site, to which the Domain Names redirect Internet users.
Even had he not admitted that he uses the Domain Names deliberately to generate traffic for his web site, the distinctive nature of the GEICO trademark would be enough to demonstrate not only that he uses the Domain Names for this purpose, but also that he registered the Domain Names for this purpose. GEICO is an acronym for the name of the Complainant. It is not a dictionary word or a name that someone wanting to generate traffic to a web site would choose randomly or accidentally. The only reason to use the word “geico” in a domain name is to trade on the well-known GEICO trademark. This is not a legitimate use of the trademark GEICO in a domain name.
Other panels considering the use of the GEICO trademark as part of a domain name have reached the same conclusion. “For a respondent to have rights or legitimate interests in a domain name comprising [sic] [consisting of] an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.” WIPO Overview 3.0, section 2.10.2; Government Employees Insurance Company (“GEICO”) v. Diamond Point Enterprises Limited, supra (regarding the domain name , “[T]he fact that the links associated with the website attached to the Disputed Domain Name are based on the trade mark value of the Complainant’s trade mark, negates the legitimacy of the said activity.”); Government Employees Insurance Company (GEICO) v. Forum LLC, supra (“Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with Complainant (citation omitted). Accordingly, a ‘trader’ such as Respondent could have no [legitimate] interest in the GEICO Marks.”)
The Panel finds that the Respondent must have known of the mark and the Complainant’s rights in the mark, and must have chosen to incorporate the trademark in the Domain Names intentionally to attract Internet users, including customers and potential customers of the Complainant, to the Respondent’s web site for commercial gain by creating a likelihood of confusion with the Complainant’s GEICO trademark as to the source or affiliation of the site, which is not a legitimate use. LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media,WIPO Case No. D2019-0245; Facebook Inc. v. te5gfh gtfghbfh, supra.
Also, the Panel finds that the Respondent could not make any legitimate noncommercial or fair use of the Domain Names, because any use of the Domain Names would result in deception and the diversion of users or potential users of the Complainant. WIPO Overview 3.0, sections 2.5.1 and 2.5.3.
None of the foregoing findings is a reflection on the legitimacy of the Respondent’s business. The issue is not the legitimacy of the Respondent’s business, but the legitimacy of the Respondent’s use of the Complainant’s trademark GEICO under the Policy.
In summary, the Panel finds (1) an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names and (2) an intent to use the Domain Names to attract Internet users, including customers and potential customers of the Complainant, to the Respondent’s web site for commercial gain by creating a likelihood of confusion with the Complainant’s GEICO trademark as to the source or affiliation of the site, which is not a legitimate interest for registering or using a domain name.
Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Names. (iii) Registration and Use of the Domain Name in Bad Faith
The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [...] (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”. Policy, paragraph 4(b)(iv).
Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith registration. WIPO Overview 3.0, section 3.1.4; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook Inc. v. te5gfh gtfghbfh, supra.
The Respondent appears to contend that he was not in bad faith because (1) he conducted a search that showed no trademarks registered for the Domain Names; (2) he registered the Domain Names for their “traffic value,” not to cause harm or mislead Internet users into believing that his web site had an affiliation with GEICO; (3) nothing on his web site suggests an affiliation with GEICO; (4) he did not demand money for the Domain Names but demanded that GEICO make an offer for them; and (5) he made a good faith effort to transfer the Domain Names, but the transfer was denied because of ICANN’s “60-day rule.”
That a search (of undisclosed nature and extent) disclosed no trademark registration for the Domain Names is of no avail to the Respondent. As stated above, a domain name does not have to be identical to a trademark in which a complainant has rights to satisfy the first element of a claim under the Policy, only confusingly similar. Moreover, the Respondent acknowledged that he knew the Complainant. The Respondent stated in his Response that a representative of GEICO, which he characterized as “one of the largest insurance companies in the US,” communicated with him.
The Respondent also admitted that he uses the Domain Names to generate traffic to his web site. He stated in his Response that “We registered domain names for there [sic] traffic value, not to cause harm or mislead any reasonable person to believe Geico is or was or currently has any affiliation with GetTheBlackC.” Although the Respondent contends that he did not intend to mislead anyone into believing that his site was affiliated with GEICO, the Panel finds that the result of his using the Domain Names was still misleading. The renown of the GEICO mark and the redirection, even without any use of the GEICO mark on the Respondent’s web site, and even without selling competing services, is enough to imply affiliation to Internet users looking for GEICO who are redirected to the Respondent’s web site.
Moreover, even if the Respondent had not admitted that he was aware of GEICO and that he had registered the Domain Names with the Complainant’s trademark to generate traffic for his web site, because the Complainant’s GEICO trademark enjoys nationwide renown in the United States, where the Complainant and the Respondent reside, i.e., it is a nationally famous trademark, the Panel would have found that the Respondent must have been aware of the Complainant’s GEICO trademark and of the Complainant’s rights in its mark at the time of registration of the Domain Names and, therefore, that the Respondent registered the Domain Names in bad faith. Policy, paragraphs 4(a) and (b); WIPO Overview 3.0, section 3.2.2 (famous mark a respondent cannot credibly claim not to have known); LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook Inc. v. te5gfh gtfghbfh, supra.
In Government Employees Insurance Company v. Mike Rummens, Caller DNA, supra, the panel found that “Long after Complainant established its rights in its well-known trademark, Respondent acquired and began commercially using the domain name to divert Internet traffic intended for Complainant. It can be inferred that Respondent was aware of Complainant’s rights in its GEICO mark when Respondent acquired the disputed domain name, which incorporates the well-known GEICO mark. At a minimum, Respondent had constructive knowledge of Complainant’s marks due to its various trademark and service mark registrations.” And in Government Employees Insurance Company v. Ronald Grero, supra, regarding the disputed domain name , the panel stated that “Further, ’[r]egistration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark may itself be evidence of bad faith registration and use,’” quoting from Delta Air Lines, Inc. v. Ruslan Moussaev,WIPO Case No. D2009-0718.
Similarly, in Government Employees Insurance Company v. Eric Ehmer, supra, regarding the disputed domain name , the panel stated, “One other fact makes application of this approach appropriate in this proceeding: the mark at issue is distinctive and not an everyday word or phrase. GEICO is an acronym, a coined term that is today known primarily as an identifier of Complainant’s products and services. There is or could be no contention that Respondent selected the disputed domain name for its value as a generic term or random combination of letters.”
A later panel, in Government Employees Insurance Company v. Michael Gonzalez, supra, regarding the disputed domain names and , followed the Ehmer decision, stating “What does show bad faith, however, is the very domain name itself,” then quoting the above passage from the Ehmer decision, and concluding, “It is because (a) there is no reason for Respondent to be using the GEICO name; (b) there is no relationship between the GEICO name and the alleged business of Respondent at the domain name; and (c) there is no relationship between the Parties that bad faith is found here. Quite simply, an examination of these facts suggests that the disputed domain name could not have been chosen for any reason other than to deliberately create a false sense of origin or sponsorship. See Harrods Limited v. Peter Lorner,WIPO Case No. D2003-0504.”
For all of the foregoing reasons, the Panel finds that the Respondent intended to register and use the Domain Names to attract Internet users, including customers and potential customers of the Complainant, to the Respondent’s web site for commercial gain by creating a likelihood of confusion with the Complainant’s GEICO trademark as to the source or affiliation of the site, in bad faith. WIPO Overview 3.0, sections 3.1.4 and 3.2; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook, Inc. v. te5gfh gtfghbfh, supra.
Although the Panel has found that the Respondent is in bad faith for the reasons discussed above, the Panel will also address two other issues raised by the Respondent.
The Respondent contends that he is not in bad faith because he did not demand money for the Domain Names, but demanded that the Complainant make an offer for them. The Respondent’s contention is somewhat disingenuous. Although the Respondent did not expressly demand money, by demanding that the Complainant make an offer at a certain price for each, expressed as a third party’s estimate of the value of each, or the Complainant’s “best offer,” the Respondent clearly offered the Domain Names for sale and clearly implied that the price would have to be at or near the prices named, each of which was many multiples of their cost. The consensus view of panels is that circumstances such as these, including an offer to sell of this nature, the Respondent’s knowledge of the Complainant’s trademark rights, and the distinctiveness of the Complainant’s mark, are evidence of bad faith. WIPO Overview 3.0, section 3.1.1.
After stating in his response that he believed that the GEICO representative who communicated with him and asked him to transfer the Domain Names was spoofing him, nevertheless, the Respondent says that he attempted to transfer the Domain Names. This in itself is implausible. Additionally, the evidence that the Respondent offers to support this statement is inadequate, because it fails to show to what party the Respondent attempted to transfer the Domain Names. Moreover, it seems unlikely that the Respondent attempted to transfer the Domain Names to the Complainant, for two reasons.
One, the Respondent appears to have misunderstood ICANN’s “60-day rule.” ICANN’s Transfer Policy permits a registrar to deny a transfer to another registrar within sixty days of the creation date. The Respondent’s Registrar’s agreement, which is in evidence in this case, avails itself of this permissive denial of transfer, stating “You agree that you will not transfer any domain name registered through GoDaddy to another domain name registrar during the first sixty 60 days after its initial registration date””. However, ICANN’s Transfer Policy does not prohibit a transfer, or permit a registrar to deny a transfer, to another registrant, apart from a transfer to another registrar. GEICO offered to receive a transfer of the Domain Names with the Respondent’s Registrar. In short, if the Respondent had tried to transfer the Domain Names to GEICO, and had used the correct procedure, the Respondent could have transferred the Domain Names.
Two, if the Respondent intended to transfer the Domain Names, the Respondent would not have contested the Complaint. Instead, the Respondent would have consented to a transfer in a settlement during the two weeks when this case was suspended for settlement discussions. However, it appears that the Respondent did not consent to a transfer and, instead, has contested the Complaint.
Accordingly, the Complainant has proven the third element, namely, that the Respondent registered and is using the Domain Names 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 Domain Names and be transferred to the Complainant.
A. Justin Ourso III
Sole Panelist
Date: April 7, 2019
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