The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / Madeline E. Jones, Quality Merchant Services, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. On August 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14 and 22, 2019, the Registrar transmitted by email to the Center its verification responses 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 August 26, 2019, 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 September 1, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on October 18, 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 BackgroundThe Complainant, Government Employees Insurance Company, is an American insurance company, incorporated in Maryland, United States, that is engaged in providing various types of insurance services including, among others, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas international insurance. It has been operating and trading in the insurance market sector for almost 80 years, since 1936, under the trademark GEICO, which is its company name acronym.
The Complainant uses the trademark GEICO to identify and promote its services and holds several trademark registrations in the United States for the same on a standalone basis 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. 763,274, for GEICO, registered on January 14, 1964, in class 36;
United States Trademark No. 2,601,179, for GEICO, registered on July 30, 2002, in class 36;
United States Trademark No. 1,442,076, for GEICO DIRECT, registered on June 9, 1987, in class 16;
United States Trademark No. 2,071,336, for GEICO DIRECT, registered on June 17, 1997, in class 36.
Copies of trademark registration certificates for the above-mentioned trademark registrations of the Complainant have been attached as Annex D to the Complaint.
Through extensive use, investment, and promotional activities by the Complainant, the GEICO trademark has become uniquely associated with the Complainant and its services. The Complainant has over 17 million policies and insures more than 28 million vehicles. Further, the Complainant has over 40,000 employees and is one of the fastest-growing auto insurers in the United States. The Complainant, through its website at “www.geico.com”, allows customers to access information regarding their policies, manage their policies and claims, learn more about the Complainant and obtain insurance quotes. A screenshot of the homepage of the Complainant’s website has been attached as Annex E to the Complaint.
According to the WhoIs Records, the disputed domain name
The disputed domain name resolved to a landing page with the following text: “SORRY! If you are the owner of this website, please contact your hosting provider: [...]@geico.tech”. A printout of the website to which the disputed domain name resolved to has been attached as Annex F to the Complaint. After becoming aware of the disputed domain name, the counsel of the Complainant contacted the Respondent via email on June 12, 2019, requesting it to cease its infringing use of the GEICO mark of the Complainant and asking it to transfer or cause the transfer of any and all offending domain names including the disputed domain name, however no response was received by the Respondent thereafter. A copy of the said email has been attached as Annex G to the Complaint.
5. Parties’ Contentions A. ComplainantThe Complainant> contends that the disputed domain name
The Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain name
The Complainant contends that the Respondent’s passive holding of the disputed domain name does not constitute a noncommercial or fair use of the disputed domain name nor can be viewed as a bona fide offering of goods and services, sufficient to establish rights or legitimate interests in the disputed domain name.
The Complainant further contends that the Respondent has also registered the disputed domain name
The Complainant states that even a simple Internet search would have revealed that the Complainant’s extensive use of the GEICO trademark as a source identifier. Likewise, domain name searches which are readily accessible online would have also disclosed the Complainant’s rights in the GEICO trademark. According to the Complainant, the Respondent can be deemed to have constructive notice of the Complainant’s trademark rights by virtue of its federal registrations in the GEICO trademark.
The Complainant argues that the Respondent’s use of the disputed domain name
The Complainant argues that even though the disputed domain name does not currently resolve to an active website, the Respondent’s registration and use of the same amounts to bad faith, as it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, amounting to passing off and an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under the trademark law.
The Complainant contends that the Respondent has provided a false address and phone number in its registration information – i.e. being the city of “Brownsville, Texas”, in the country of “Germany”, and with a postal code of “78520.” The Respondent’s apparent use of false registration information in obtaining the disputed domain name also supports a finding of bad faith. The fact that even after being put on notice of the Complainant’s rights, the Respondent refused to transfer the disputed domain name to the Complainant is also indicative of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Respondent did not file any response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favour of the the Complainant. The Complainant must still establish each of the three elements stipulated under paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Further, a trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. See WIPO Overview 3.0, section 1.2.1.
The Panel, in this regard, notes that the Complainant’s trademark GEICO is not a word or phrase but rather an acronym/invented term derived from the initial letters of the Complainant’s corporate name, Government Employees Insurance Company, and is distinctively associated with the goods and services of the Complainant.
The Complainant has provided evidence that it has trademark registrations at the United States Patent and Trademark Office for its trademark GEICO, the earliest registration for which dates back to 1964. Valid and subsisting trademark registrations constitute prima facie evidence of ownership, validity, and the exclusive right to the use the said trademarks in connection with the stated goods and services.
The Complainant also uses the trademark GEICO as a part of the domain name
The Panel further observes that the disputed domain name
It is obvious that the disputed domain name contains the trademark GEICO in its entirety. The Panel observes that WIPO Overview 3.0, section 1.7, states that “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 UDRP standing”.
Further it is noted by the Panel that WIPO Overview 3.0, section 1.11, also sets out that “[t]he applicable [gTLD] in a domain name (e.g., “.com”, “.club”, “.nyc”) s viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Accordingly, the gTLD “.tech” in the disputed domain name can be disregarded.
In view of the above findings, the Panel concludes that the disputed domain name
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademarks or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element”.
The Complainant has stated that it has no connection or affiliation with the Respondent and has not given any license or consent, express or implied to the Respondent to use the GEICO trademark in a domain name or in any other manner. The Complainant has contended that the Respondent has never been commonly known by the disputed domain name and that its misappropriation by the Respondent was no accident. The Complainant has also stated that the Respondent’s passive holding of the disputed domain name
The Panel is therefore satisfied that the Complainant has made out a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name, the burden of production on this element therefore shifts onto the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent has failed to produce any countervailing evidence of any rights or legitimate interests in the disputed domain name
The Panel has, on the basis of material produced by the Complainant, arrived at the following conclusions:
(i) The Complainant has established that it is the registered proprietor and owner of the trademark GEICO, rights in respect of which have accrued in the Complainant’s favour since 1964, long prior to the registration of the disputed domain name
(ii) The Respondent’s name as per the information disclosed by the Registrar is Madeline E. Jones, Quality Merchant Services, and that it is not commonly known by the trademark GEICO, and there can no plausible reason or explanation for the Respondent to have adopted the Complainant’s registered trademark GEICO as a part of the disputed domain name, more so as the said trademark of the Complainant is an acronym/invented term derived from the initial letters of the Complainant corporate name. The Panel observes that the Complainant’s trademark GEICO has no established meaning or generic value but as a well-established brand and is distinctive only of the Complainant and its services. The Panel notes that the Complainant has never licensed or otherwise authorized the Respondent to use its trademark GEICO or incorporate the same in any domain name. The Respondent therefore does not have any rights or legitimate interest in the disputed domain name. See, Booz Allen Hamilton Inc. v. Derrick Dale and Domains by Proxy, LLC,
WIPO Case No. D2013-1288.
(iii) The disputed domain name
The Panel notes that the composition of the disputed domain name, being identical to the Complainant’s trademark in the disputed second-level Domain, does not give rise to rights or legitimate interests under the Policy, because the composition of the disputed domain name is identical to a strong trademark and carries an implied risk of association with the Complainant. See section 2.5.1 of the WIPO Overview 3.0. See, Travelscape, LLC v. VistaPrint Technologies Ltd.,
WIPO Case No. D2015-1588.
(iv) It appears to the Panel that the Respondent is a cybersquatter and has intentionally registered and is using/has used the disputed domain name
WIPO Case No. D2001-0067.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith:The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy further provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
According to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The disputed domain name
Previous UDRP panels have consistently found that it ought to be presumed that the Respondent should have known of the Complainant’s trademark if it is shown to be in wide use on the Internet or otherwise. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,
WIPO Case No. D2009-0320; and The Gap, Inc. v. Deng Youqian,
WIPO Case No. D2009-0113.
In the backdrop of the Complainant’s extensive use and advertising, widespread business activities worldwide, overseas office locations, and numerous trademark registrations in United States (dating back to 1964 and predating the Respondent’s registration of the disputed domain name on May 1, 2019), coupled with the Complainant’s presence in the United States and Germany, where apparently the Respondent is domiciled, the Panel finds it clear that the Respondent must have been aware of the rights of the Complainant in its registered and reputed GEICO trademark at the time of registration of the disputed domain name.
According to the Policy, bad faith is understood to occur where a Respondent takes unfair advantage of or otherwise abuses a complainant’s trademark (see section 3.1 of the WIPO Overview 3.0). The Panel concludes that the Respondent must have been aware of the goodwill and reputation associated with the Complainant’s trademark and had registered the disputed domain name
The Panel has perused Annex F to the Complaint and observes that the disputed domain resolves into landing page which features an inactive website and contains an email “[...]@geico.tech”. It is apparent that the disputed domain name has been registered only to derive benefit from or create an impression amongst unsuspecting Internet users that the Respondent’s business is associated, sponsored, affiliated or endorsed by the Complainant, which is false and misleading. Previous UDRP decisions have cited that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Action S.A. v. Robert Gozdowski,
WIPO Case No. D2008-0028. Lastly the Respondent, at the time of registering of the disputed domain name, had employed a privacy service to hide its identity.
The Panel finds that the Respondent’s use of a privacy or proxy service and inconsistent registrant details may have been used to block or intentionally delay disclosure of the identity of the actual underlying registrant and supports an inference of bad faith. The said view is further consistent with the principles set out in WIPO Overview 3.0, section 3.6, which has been upheld in previous UDRP decisions. See, BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,
WIPO Case No. D2008-0882.
Accordingly, having regard to the circumstances of this particular case, the Panel holds that the Complainant has discharged the burden of proof under paragraph 4(a)(iii) of the Policy. Therefore, the Panel finds that the disputed domain name was registered and has been used in bad faith.
7. DecisionFor 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
Shwetasree Majumder
Sole Panelist
Date: November 7, 2019