The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “US”), represented by Burns & Levinson LLP, US.
The Respondent is Domain Protection Services, Inc., US / Zhichao Yang, China, and Super Privacy Service LTD c/o Dynadot, US / Zhichaoi, US, and Jun Yin, US. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 17, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On April 17 and 18, 2020, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2020. 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 April 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020. The Center appointed Karen Fong as the sole panelist in this matter on June 10, 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 well-known insurance company based in the United States that has provided insurance services since 1936. It offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. The Complainant has been trading under the trade mark GEICO for nearly 80 years. It owns trade mark registrations for GEICO including the following United States trade mark registrations: Mark Class Registration No. Registration Date GEICO 36 763,274 January 14, 1964 GEICO 36 2,601,179 July 30, 2002 (individually and collectively referred to as the “Trade Mark”). The Complainant has over 16 million policies and insures more than 27 million vehicles. It has 40,000 employees and is one of the fastest-growing auto insurers in the United States. The Complainant’s main website is at “www.geico.com”. The Complaint involves three Domain Names which are registered to multiple Respondents as detailed below: No Domain Name Registrant Date of Registration Comments 1 Jun Yin March 5, 2020 Domain Name 1 was connected to a pay-per-click website with hyperlinks bearing the following descriptions: “Apartment Renters Insurance Renter Insurance Geico Renter Insurance Geico Insurance Cheap Renters Insurance Geico Renters Insurance Geico Insurance Agency” The Domain Names all share a common server. The registrant of Domain Name 1 shares the same postal address as the registrant of Domain Name 2. Whilst the registrant name of Domain Name 2 is similar to that of Domain Name 3. Domain Name 1 is no longer active. 2 Zhichaoi March 13, 2020 Domain Name 2 was registered in the name of a privacy protection company. It was connected to a pay-per-click website with hyperlinks to the following: “Job Postings Applicant Tracking System Employee Onboarding System Payroll Services Employee Benefits Recruitment Software HR Software”. The website was identical to that connected to Domain Name 3. The Domain Names all share a common server. The registrant of Domain Name 2 shares the same postal address as the registrant of Domain Name 1. Whilst the registrant name of Domain Name 2 is similar to that of Domain Name 3. Domain Name 2 is no longer active. 3 Zhichao Yang February 26, 2020 Domain Name 3 was registered in the name of a privacy protection company. It is connected to a website which is identical to that of Domain Name 2. The Domain Names all share a common server. The registrant name of Domain Name 3 is similar to that of Domain Name 2. Whilst the registrant of Domain Name 2 shares the same postal address as the registrant of Domain Name 1. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrants are related and under management and common control of a single network are set out in the comments in the table above. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue – Consolidation of the Proceeding Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles: “1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. 2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.” The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity or network and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant’s marks. Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. The Respondents may therefore be referred to as the Respondent. 7. Discussion and Findings 7.1. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. 7.2. Substantive Analysis A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark is reproduced in its entirety in the Domain Names. Domain Name 1 comprises the Trade Mark whilst Domain Names 2 and 3 comprises the Trade Mark and the descriptive terms “job” and “career” respectively. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the various generic Top-Level Domain suffixes which in this case are “.cam” and “.com”. For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. 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 does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the Trade Mark or register the Domain Names or any domain name. Neither is the Respondent commonly known by the Domain Names. The Respondent’s unauthorized use of the Trade Mark in the Domain Names in relation to pay-per-click websites is not bona fide or legitimate noncommercial or fair use of the Domain Name. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The earliest trade mark registration of the Complainant predates the registration of the Domain Names by over 50 years and the Domain Names consist of the Trade Mark in its entirety and the fact that the website connected to Domain Name 1 includes links which misleadingly bear the Trade Mark and references the Complainant’s services when in fact the links do not connect to the Complainant’s website. Further the fact that the Domain Names are registered in the names of different registrants subject to common control and two of them were registered in the names of privacy protection companies evidences a lack of transparency which is typical of a cyber squatter. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Names. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Domain Names are also used in bad faith. The websites are pay-per-click sites, which have been set up for the commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Names into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names. The Respondent employs the fame of the Trade Mark to mislead users into visiting the websites connected to the Domain Names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. 8. 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 Names Karen Fong
Sole Panelist
Date: June 26, 2020
Full & Egal Universal Law Academy