The Complainant is Government Employees Insurance Company, United States of America (the “United States” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is Contact Privacy Inc. Customer 1245075775, Canada / Tammy Toomer, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2019, the Registrar 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 Complainant on August 23, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 4, 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2019.
The Center appointed Scott R. Austin as the sole panelist in this matter on October 8, 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
Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support:
1) that it is a well-known insurance company that has provided insurance services since 1936;
2) that it has been trading under the trademark GEICO representing an acronym for its corporate name, Government Employees Insurance Company (the “GEICO Mark”) for nearly 80 years;
3) that it has established exclusive rights in the GEICO Mark;
4) that it offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others;
5) that it invests large sums to promote and develop its marks through television, print media, and the Internet;
6) that it is the registrant of the domain name , which provides access to a website it uses to promote and sell its motor vehicle insurance services;
7) that it is the owner of numerous trademark and service mark registrations that incorporate the term GEICO, including the following registered with the United States Patent and Trademark Office (“USPTO”):
a) US Trademark Registration No. 0763,274, filed December 6, 1962, registered January 14, 1964, for use in connection with, among other goods and services, “Insurance Underwriting and Related Services – Namely, Automobile Collision, Comprehensive and Liability Insurance” in international class 36 and claiming the GEICO Mark was first used in interstate commerce at least as early as January 1, 1948; and
b) US Trademark Registration No.2,601,179 filed January 25, 2001, registered July 30, 2002, for use in connection with, among other goods and services, “Providing insurance brokerage and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods and boats” in international class 36 and claiming the GEICO Mark was first used in interstate commerce at least as early as December 31, 1948.
8) that the disputed domain name was registered on July 16, 2019 and is and has been passively held, not resolving to an active website. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has established trademark rights because the disputed domain name contains the GEICO Mark in its entirety plus the common descriptive terms “ins”, a common abbreviation for Complainant’s business of insurance, and “co” a common abbreviation for the business descriptor “company”, along with a generic Top‑Level Domain (“gTLD”) which does not alleviate or overcome the confusing similarity between Respondent’s disputed domain name and the GEICO Mark.
2. Respondent has no rights or legitimate interests in the disputed domain name because:
a) “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO Mark in a domain name or in any other manner;”
b) “Respondent has never been known by the disputed domain name”; and 3) “Respondent’s misappropriation of the GEICO Mark in the disputed domain name was no accident”, but intentionally chosen by Respondent “to create an impression of an association with the Complainant.”
3. The disputed domain name has been registered and is being used in bad faith because: a) Respondent had actual notice of Complainant’s GEICO Mark given Complainant’s decades of use, “extensive advertising, including television advertising, featuring its name and mark and offices throughout the world;”
b) “it is simply inconceivable that Respondent was unaware of GEICO’s rights in the GEICO Mark when it registered its disputed domain name that fully incorporates Complainant’s famous, federally-registered GEICO Mark in its entirety;” and
c) “there is no conceivable contemplated use of the disputed domain name that would not be an infringing use by the Respondent.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar:
Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to the GEICO Mark.
For the disputed domain name to be found identical or confusingly similar to the GEICO Mark, the relevant comparison is with the second-level portion of the disputed domain name, as it is well established that the gTLD “.com” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11 (“WIPO Overview 3.0”), (Top-Level Domain as technical requirement for domain name registration is disregarded under the confusing similarity test).
Other UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB,WIPO Case No. D2018-1138 (panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and disputed domain name ).
This Panel agrees with prior panelists in the decisions cited by Complainant which found disputed domain names containing a complainant’s distinctive trademark in its entirety and adding the common abbreviations “ins” and “co” for “insurance” and “company” respectively, identifying Complainant’s business as an insurance company, to be confusingly similar to the registered trademark. See Allstate Insurance Company v. P / Rampe Purda,WIPO Case No. D2011-0243 (ordering transferred to complainant upon finding that incorporation of “ins” descriptive of complainant’s insurance services); ALSTOM v. Domain Admin, Privacy Protect, LLC (PrivacyP) / Bryan Owen,WIPO Case No. D2019-0445 (finding “the “co” element, as a commonly used abbreviation for the generic term “company” will not be remembered by the average consumer” and transferring the disputed domain name, to complainant).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests:
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: a) “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO Mark in a domain name or in any other manner;” b) “Respondent has never been known by the disputed domain name”; and 3) “Respondent’s misappropriation of the GEICO Mark in the disputed domain name was no accident”, but intentionally chosen by Respondent “to create an impression of an association with the Complainant.”
Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element,” WIPO Overview 3.0, section 2.1.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, stating, without challenge by Respondent, that “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO Mark in a domain name or in any other manner.”
Complainant contends Respondent has no rights or legitimate interests because “Respondent has never been known by the disputed domain” and provides the relevant WhoIs record in support of this contention. Upon review of the evidence submitted the Panel agrees with Complainant. See Marriott Int’l, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). Based on the foregoing and the Panel’s review of the WhoIs evidence submitted by Complainant, the Panel finds Respondent is neither authorized to use nor commonly known by the disputed domain name and Complainant has met its prima facie burden under this element of the Policy.
Complaint also argues that “Respondent’s misappropriation of the GEICO Mark in the disputed domain name was no accident and that “[w]here 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 the Complainant.” Complainant contends, therefore, that based on Respondent’s selection of Complainant’s GEICO Mark for its disputed domain name, Respondent could have no rights or legitimate interests in the disputed domain name, See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, as a result of Complainant’s allegations sufficient to meet its burden of a prima facie case and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant contends that there is no conceivable future use of the subject domain name that would be non-infringing given the fact that the domain name incorporates Complainant’s GEICO mark in its entirety. This Panel agrees. Such conduct has been found, by itself, to constitute bad faith use of the domain names. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Given the degree of distinctiveness or reputation of the Complainant’s world famous GEICO Mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the Respondent’s concealing its identity, and the above-stated implausibility of any good faith use to which the domain name may be put, the Panel finds Respondent has registered and used the disputed domain name in bad faith, See WIPO Overview 3.0, section 3.3; see also Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 Complainant.
Scott R. Austin
Sole Panelist
Date: October 22, 2019
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