The Complainant is Government Employees Insurance Company, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 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 April 9, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was April 29, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 8, 2020. The Center appointed D. Brian King as the sole panelist in this matter on May 15, 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 A. The Parties The Complainant is Government Employees Insurance Company (“Geico”), which was founded in the United States of America in 1936 and has been operating since that time. The Complainant offers a variety of insurance services, including automobile, motorcycle, homeowners, rental, and personal umbrella insurance policies. According to the Complainant, it presently has more than 17 million policy holders and over 40,000 employees. The Respondent has not provided the Panel with any information on its history or activities. B. The Mark The Complainant has traded under the GEICO mark for decades. It has registered numerous trademarks and service marks that incorporate the GEICO mark or visual representations of it. These include the following registrations with the United States Patent and Trademark Office (“USPTO”): Trademark International Class Registration Date Registration Number GEICO 36 January 14, 1964 763,274 GEICO 36 July 30, 2002 2,601,179 GEICO DIRECT 36 June 9, 1987 1,442,076 GEICO DIRECT 36 June 17, 1997 2,071,336 GEICO AUTO REPAIR XPRESS 36 August 2, 2005 2,982,260 GEICO 36 July 10, 2007 3,262,263 The Complainant has also established a website at “ www.geico.com” that it uses to promote and sell its insurance services. The website enables users to view information on the Complainant’s services, obtain insurance quotes, and manage their Geico insurance policies (Annex E to the Complaint). C. The Domain Name The disputed domain name, The Complainant submits that the Domain Name is confusingly similar to its registered trademarks. In particular, the Domain Name entirely incorporates the GEICO mark, appending to it the generic term “email” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant argues that neither addition sufficiently distinguishes the Domain Name from the GEICO mark. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to register the Website or use the Complainant’s GEICO trademark; on the contrary, it sent a cease-and-desist letter to the Respondent after learning of the registration of the Domain Name (Annex G to the Complaint), to which no response was received. The Complainant argues that the hyperlinks contained on the Website are pay-per-click (“PPC”) links to competing insurance companies, and that this does not constitute a bona fide offering of goods and services. Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent must have been aware of the Complainant’s rights in the GEICO mark when registering the Domain Name, given the notoriety of the mark and the Complainant’s multiple registrations of it with the USPTO. Indeed, says the Complainant, the content of the Website shows conclusively that this is the case, because it includes an express reference to the Complainant’s business. Registering a confusingly similar domain name in this manner, the Complainant contends, constitutes bad faith registration. As to the element of bad faith use, the Complainant argues that the Respondent has used PPC links to profit illicitly from Internet users attracted to its Website by the confusing similarity of the Domain Name to the GEICO mark. This, the Complainant contends, establishes bad faith use. The Complainant characterizes the Respondent’s failure to reply to its cease-and-desist letter as further evidence of bad faith registration and use of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above. Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar The Domain Name wholly incorporates the Complainant’s GEICO trademark preceded by the term “email”. UDRP panels have consistently held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s trademark does not prevent a finding of confusing similarity under the first element of the test (see, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo,WIPO Case No. D2006-1307). Consistent with those prior holdings, the Panel finds that appending the term “email” does not eliminate the confusing similarity between the Domain Name and the Complainant’s trademark. The same conclusion applies to the addition of the gTLD “.com”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Thus, the Panel has no difficulty in finding that the Domain Name is confusingly similar to the Complainant’s GEICO mark. B. Rights or Legitimate Interests Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading,WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the Respondent to prove that it does have rights or legitimate interests in respect of the disputed domain name. The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s GEICO mark. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name. In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) of the Policy is present here. The Complainant has convincingly argued that the Respondent was aware of the Complainant’s rights in the GEICO mark when it registered the confusingly similar Domain Name. Indeed, the fact that the Website expressly refers to the Complainant, and includes links to websites offering insurance services, leaves no doubt in this regard. The Complainant has also proved to the Panel’s satisfaction that the Respondent featured PPC links to competing insurance businesses on its Website. The necessary conclusion is that the Respondent has attempted to attract Internet users to its Website, for commercial gain, by creating a likelihood of confusion with the Complainant’s GEICO mark. These facts satisfy paragraph 4(b)(iv) of the Policy and sufficiently establish bad faith registration and use on the Respondent’s part. Accordingly, the Panel finds that the Complaint succeeds with respect to the third element under paragraph 4(a) of the Policy as well. 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 Name, D. Brian King
MOTORCYCLE
Sole Panelist1
Date: May 29, 2020
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