Complainant is Government Employees Insurance Company, United States of America (the “United States”), represented by Burns & Levinson LLP, United States.
Respondent is Gabriel Sosa, Geicoclaims Inc., United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 31, 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 November 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. Respondent submitted an email communication asking for the Complaint on November 2, 2019, but did not submit a formal response. Accordingly, the Center notified the commencement of the Panel Appointment Process on November 28, 2019. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on December 13, 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 has continuously and exclusively used the GEICO mark in connection with numerous types of insurance services for at least 70 years. Complainant has over 40,000 employees, manages 17 million policies and insures more than 28 million vehicles. It is the owner of numerous United States registrations for the GEICO mark, including US registrations 763,274 and 2,601,179. It also operates the website located at the domain name Respondent registered all the disputed domain names, Complainant contends that the disputed domain names are confusingly similar to its GEICO trademarks because they reproduce identically and entirely the GEICO mark. Complainant alleges that the addition of a hyphen and the generic term “claims” to the GEICO mark is insufficient to distinguish the disputed domain names from Complainant’s trademark. Complainant contends that Respondent has no rights or legitimate interests in or to the disputed domain names. According to Complainant, Respondent has never been commonly known by the disputed domain names and that it has not licensed to Respondent the right to use the GEICO trademark, and that Respondent is not otherwise authorized to act on Complainant’s behalf. According to Complainant, Respondent has registered and is using the disputed domain names in bad faith to benefit from the goodwill and fame associated with Complainant’s GEICO mark. Complainant asserts that Respondent’s bad faith is established by the fact that all disputed domain names purposefully incorporate the well-known GEICO mark, and were registered long after this mark became well-known to consumers. According to Complainant, it is inconceivable that Respondent was unaware of GEICO’s rights when it registered disputed domain names fully incorporating Complainant’s famous federally registered GEICO mark. Furthermore, Respondent had actual and constructive notice of Complainant’s rights given the extensive advertising it engages in and the existence of its active federal registrations. Complainant also contends that Respondent’s bad faith registration and use of the disputed domain names is further established by the fact that one of the disputed domain names, Complainant also asserts that the fact that some of the disputed domain names are not active does not prevent a finding of bad faith since Respondent is attempting to exploit or otherwise capitalize on Complainant’s GEICO mark by offering to sell the disputed domain names that fully incorporate this mark. Accordingly, Complainant requests that the disputed domain names be transferred to Complainant. B. Respondent Although Respondent sent an email communication, Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 3(c) of the UDRP Rules allows a complaint to relate to more than one domain name provided that the domain names are registered by the same domain-name holder. Complainant has provided clear evidence that the Respondent is the registrant for all the disputed domains, thus justifying joining all domain names in this sole proceeding. Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. Furthermore, Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the GEICO trademarks through its United States registrations. With Complainant’s rights in the GEICO marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. Here, Complainant’s GEICO mark is fully incorporated in all the disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s GEICO trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has presented evidence showing that the inactive disputed domain names have no other function or purpose apart from Respondent’s attempt to resell them for a profit. Furthermore, Respondent has used the active disputed domain name to misrepresent that he is associated with Complainant in connection with settling auto insurance claims, and potentially in connection with an apparently fraudulent scheme to obtain Complainant’s customers’ personal information. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1, and section 2.5.1. Complainant has also asserted that Respondent has no authorization to use the GEICO mark, and Respondent is not commonly known by this name. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain names within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use and numerous registrations of the GEICO mark that long predates the Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the GEICO trademark when it registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Complainant has also provided evidence strongly suggesting that Respondent, through use of the active disputed domain name, is conducting what appears to be a fraudulent scheme to collect Internet users’ personal data. Respondent solicits visitors’ names and phone numbers through a pop-up text box when they visit, while misrepresenting that Respondent is associated with settling auto insurance claims for Complainant. This type of behavior is manifestly considered evidence of bad faith. See WIPO Overview 3.0 section 3.1.4. Respondent’s bad faith is further established by the full incorporation of Complainant’s GEICO trademark in all the disputed domain names and the lack of evidence of any rationale behind their registration apart from an attempt to profit from or exploit Complainant’s GEICO mark. See, e.g., Royal Bank of Canada v. Namegiant.com,WIPO Case No. D2004-0642. Therefore, Respondent’s registration and use of the disputed domain names not only clearly indicate full knowledge of Complainant’s GEICO mark but also an attempt of misleadingly diverting consumers for its own commercial gain, possibly in connection with fraudulent activities, and/or an attempt to profit from Complainant’s mark. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraph 4(b)(iv) 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 names, Brian J. Winterfeldt
Sole Panelist
Date: January 6, 2020
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