The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Administrator Dom, Muscari Holding Limited, Cyprus. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020. The Center appointed Fabrice Bircker as the sole panelist in this matter on March 25, 2020. 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 a United States insurance company founded in 1936. The Complainant notably holds the GEICO United States trademark registration No. 763,274 registered on January 14, 1964 (applied on December 6, 1962) in International Classes 35 and 36, and notably covering insurance services. This registration incorporates a 1948 first use claim. The Complainant has used the GEICO trademark extensively over the years, including on the Internet. In this respect, the Complainant owns the The disputed domain name, According to the Panel’s observations, it randomly redirects toward, among others: - a parking page promoting insurances services and displaying a message indicating that the disputed domain name is for sale, - a website of a competitor of the Complainant, - a website impersonating the Microsoft Office helpdesk and which threaten the Internet user to block its computer and/or which trigger error or security messages (conducting to block the web browser), or - a website trying to download dubious software on the Internet user’s computer. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: Identical or Confusingly Similar The Complainant contends that the disputed domain name is confusingly similar to its trademark notably because it merely adds an additional letter “h” into its GEICO mark, which is a common and minor typographical error that easily goes unnoticed by the average Internet user (“typosquatting”). Rights or Legitimate Interests The Complainant asserts that the Respondent has no connection or affiliation with it and has not received any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner. The Complainant also believes that the Respondent has never been known by the disputed domain name. The Complainant adds that the Respondent’s misappropriation of its famous GEICO trademark in the disputed domain name was no accident because where a mark is famous it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant. Besides, the Complainant argues that the Respondent has put the disputed domain name for sale and is using it to redirect toward a competitor’s website, what is sufficient basis to find a lack of rights legitimate interests in the disputed domain name. Registration and Use in Bad Faith The Complainant contends that it is inconceivable that the Respondent was unaware of its GEICO trademark when it registered the disputed domain name because it fully incorporates this famous federally registered trademark in its entirety. In addition, the Complainant puts forward that its GEICO trademark is extensively advertised and that it has offices throughout the world. Therefore, even a simple Internet search would have revealed the Complainant’s extensive use of the GEICO trademark. The Complainant adds that its rights in the GEICO trademark would also have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online. As a consequence, the Complainant considers that the Respondent is deemed to have constructive notice of its trademark rights by virtue of its federal registrations in the GEICO trademarks. Accordingly, the Complainant contends that the Respondent’s illicit registration and use of the disputed domain name despite notice of the Complainant’s trademark rights is evidence of bad faith registration and use of the disputed domain name. The Complainants also argues that the Respondent’s use of the GEICO trademark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so, also is evidence of bad faith. The Complainant adds that the fact that Respondent has listed the disputed domain name for sale suggests that the sole purpose for the Respondent to register and to hold the disputed domain name is for its resale. According to the Complainant, such purpose strongly suggests that the Respondent was aware of the Complainant’s trademark and of its business when it registered the disputed domain name and that the Respondent’s intention in registering the disputed domain name was for financial gain, all in bad faith. Finally, the Complainant contends that the Respondent’s use of the disputed domain name supports a finding of bad faith and there is no conceivable contemplated use of the disputed domain name that would not be an infringing use by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Besides, 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”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark. Annex D to the Complaint undisputedly shows trademarks registrations for GEICO in the name of the Complainant, including: - United States trademark GEICO filed on December 6, 1962, registered under No. 763,274 on January 14, 1964 in International Classes 35 and 36, and notably covering insurance services. This registration incorporates a 1948 first use claim. Turning to whether the disputed domain name is identical or confusingly similar to the GEICO trademark, the Panel notes that the only differences between the signs in comparison lie in the presence of the generic Top-Level Domain (“gTLD”) “.com” and in the insertion of the letter “h” after the “g”. Obviously, these differences do not prevent the GEICO trademark to be recognizable within the disputed domain name. Indeed, the consensus view among UDRP panels is that “gTLDs” may be ignored for the purpose of assessing confusing similarity because they typically play a technical function, see WIPO Overview, section 1.11. Besides, there is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name, see WIPO Overview 3.0, section 1.9. In the light of the above, the Panel considers that the addition of the letter “h” after the “g” is to be considered as a common or obvious typo, in particular because these two letters are next each other on many keyboards and because accidentally pressing two adjoining keys is a common and frequent mistake made by Internet users. Consequently, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and therefore that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent], [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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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. While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (see WIPO Overview 3.0, section 2.1). In the present procedure, the Complainant claims that the Respondent is not affiliated with it in any way, nor has it been authorized or licensed to use its GEICO trademark or to seek registration of any domain name incorporating said trademark. Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Furthermore, the disputed domain name is offered for sale and also dynamically redirects toward websites whose content is of commercial nature and even sometimes very likely fraudulent. Obviously such a use of a domain name which is very close to a well-known trademark is neither a bona fide offering of goods or services, nor a legitimate noncommercial use or fair use. In addition, the GEICO trademark is intrinsically distinctive and has been considered well-known by several UDRP panels (see, e.g. Government Employees Insurance Company (“GEICO”) v. Hildegard Gruener,WIPO Case No. D2015-1410; Government Employees Insurance Company (“GEICO”) v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2019-0596; Government Employees Insurance Company v. WDAPL,WIPO Case No. D2019-3025). In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that it does have some rights or legitimate interests. The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. As a consequence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are: (i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or (ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location. Regarding registration in bad faith, the Panel notes that: - the Complainant’s prior trademark is intrinsically distinctive and has been recognized as well-known by several UDRP panels (see in particular the decisions mentioned in paragraph 6.B supra), - the disputed domain name is very close to the Complainant’s trademark and contains a common and obvious typo; in these circumstances and because the “gheico” denomination has no meaning per se, the Panel is of the opinion that the only raison d’être of the disputed domain name is to refer to the Complainant’s prior trademark, - the disputed domain name notably redirects toward websites promoting insurance services competing with those of the Complainant, - a mere query on a search engine for “gheico” automatically triggers results concerning the Complainant’s GEICO trademark and even propose to correct “gheico” into GEICO, - the Respondent has remained silent from the beginning of this dispute and therefore has not denied the assertions made by the Complainant (while if the Respondent had legitimate purposes for registering and using the disputed domain name, it would have defended its case). These circumstances lead the Panel to consider that the Respondent has registered the disputed domain name having the Complainant’s trademark in mind. Regarding use in bad faith, the Panel notes that the disputed domain name: - is ostensibly offered for sale, - is used to dynamically redirect toward websites whose content either promotes services competing with those of the Complainant, or are very likely fraudulent. In addition, several UDRP decisions have already ordered the transfer of domain names that were registered and used by the Respondent (see, e.g. Serco Group Plc v. Administrator Dom, Muscari Holding Limited / Carolina Rodrigues,WIPO Case No. D2018-0185). Therefore the Respondent has engaged in a pattern of conduct of registering domain names reflecting third parties prior trademarks and is deliberately using the disputed domain name not only to prevent the Complainant to own it, but also for capitalizing on the reputation of the Complainant’s trademark by diverting Internet users for commercial gain. As a consequence, the Panel finds registration and use in bad faith of the disputed domain name, so the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 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 Fabrice Bircker
Sole Panelist
Date: April 8, 2020
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