The Complainant is Government Employees Insurance Company, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2020, 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 the Complainant on June 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9 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 June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020. The Center appointed Haig Oghigian as the sole panelist in this matter on August 13, 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 administrative Panel finds the following as uncontested facts: The Complainant is Government Employees Insurance Company (“GEICO”), an insurance provider incorporated under the laws of the state of Maryland. GEICO is a well-known insurance company that has provided insurance services since 1936. It offers numerous insurance services, including automobile, motorcycle, homeowners, rental condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. GEICO has been trading under the trademark GEICO (the “GEICO Mark”) for almost eighty (80) years and owns exclusive rights in the GEICO Mark. GEICO has numerous federally registered trademarks and service marks that wholly incorporate the GEICO Mark or iconic visual representations thereof, including, without limitation, the following registrations with the United States Patent and Trademark Office: Mark International Class Registration No. Registration Date GEICO 36 763,274 January 14, 1964 GEICO 36 2,601,179 July 30, 2002 GEICO DIRECT 16 1,442,076 June 9, 1987 GEICO DIRECT 36 2,071,336 June 17, 1997 GEICO AUTO REPAIR XPRESS 36 2,982,260 August 2, 2005 GEICO MOTORCYCLE 36 3,262,263 July 10, 2007 The Complainant has made extensive use of the GEICO Mark in connection with its services. It invests large sums to promote and develop the GEICO Mark through television, print media, and the Internet. As a result, the GEICO Mark is a powerful, recognizable symbol of the Complainant’s goodwill and excellent reputation. Through extensive use and promotional activities using the GEICO Mark, it has become uniquely associated with the Complainant and its services. GEICO has over 17 million policies and insures more than 28 million vehicles. GEICO has over 40,000 employees. Further, in connection with its insurance products and services, the Complainant uses the website located at “www.geico.com”, which it uses to promote and sell its motor vehicle insurance services. The website enables users to access information regarding the Complainant’s insurance services, manage their policies and claims, learn more about the Complainant, and obtain insurance quotes. The Respondent was identified as Domains By Proxy, LLC. However, the Registrar has advised that the registrant of the Disputed Domain Name is Carolina Rodrigues, Fundacion Comercio Electronico. The Respondent registered the Disputed Domain Name on May 15, 2020. At the time the Complaint was filed the Disputed Domain Name resolved to pay-per-click links. After becoming aware of the Disputed Domain Name, the Complainant sent a demand letter to Respondent’s email of record on May 21, 2020 regarding the Complainant’s rights in the GEICO Mark and the Respondent’s activities and demanding transfer of the Disputed Domain Name (the “Demand Letter”). The Complainant has not received a response to the Demand Letter. 5. Parties’ Contentions A. Complainant The Complainant submits that the Disputed Domain Name fully incorporates the GEICO Mark. It adds only the letter “j” and a generic Top Level Domain (“.com”). The Complainant submits that the Disputed Domain Name is therefore identical or confusingly similar to the GEIGO Mark and that its use is intended to impersonate the Complainant, and to intercept and confuse consumers looking for GEIGO products or services. The addition of the letter “j” is not sufficient to prevent this confusion. The unauthorized use of the Disputed Domain Name by Respondent severely harms the Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the United States of America and elsewhere around the world. Secondly, the Complainant submits that the Respondent has no right or legitimate interests in the Disputed Domain Name. There is no connection or affiliation between the Complainant and the Respondent. The Complainant has not authorized or licensed the Respondent’s use of the GEICO Mark or the registration of the Disputed Domain Name. There is no evidence that Respondent otherwise has any legitimate claims to the Disputed Domain Name. The Complainant submits that the use of the GEICO Mark in the Disputed Domain Name is not an accident, given that the mark is famous. The Disputed Domain Name redirects to a website containing a list of apparent pay-per-click links to unrelated third-party websites (but that include the GEICO Mark), including to websites of Complainant’s competitors. The Complainant submits that this is not a legitimate interest. The website also states that the Disputed Domain Name is for sale. The Complainant submits that Respondent is using and has used the Disputed Domain Name intentionally to attempt to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to Respondent’s own webpage by creating a likelihood of confusion with the Complainant, for commercial gain. Finally, the Complainant argues that the Disputed Domain Name was registered in bad faith by doing so with the knowledge of the Complainant’s rights in the GEICO Mark and with the intent to profit by using this mark. It argues that it is “simply inconceivable that the Respondent was unaware of GEICO’s rights in the GEICO Mark when it registered the Disputed Domain Name”, incorporating the GEICO Mark in its entirety. Indeed, the Respondent argues that it is obvious that the Respondent knew of the Complainant of the GEICO Mark as the websites. These websites (found at the hyperlinks) reference the Complainant, which the Complainant argues is further evidence that the Complainant knew of the Complainant and of the GEIGO Mark. Although there is a generic website boilerplate disclaimer in very fine print at the bottom of the webpage (stating that reference “to any specific service or trade mark” does not “constitute or imply its association, endorsement or recommendation”), the Complainant argues that this does not absolve the Respondent from a finding of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the transfer of the disputed domain name may be ordered if the Complainant demonstrates three elements: (A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (B) the Respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates the GEICO Mark in its entirety. The Panel finds that the addition of the letter “j” does not avoid a finding of confusing similarity. (See Zions Bancorporation v. Hobart Jervis,WIPO Case No. D2014-0772, where the panel held that the “addition of the letter ‘j’ to the term ‘bank’ in the disputed domain name does not sufficiently distinguish the disputed domain name” from the marks in that case.) The Panel determines that the Disputed Domain Name is confusingly similar to the GEICO Mark. B. Rights or Legitimate Interests No evidence exists to show that (i) the Respondent’s use of the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the Disputed Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant never authorized or licensed the Respondent to use the Complainant’s trademark, nor is the Respondent connected or affiliated with the Complainant. Further, there is no evidence that the Respondent is known by the name GEICO or holds any trademarks in its name (as was the case in Marriott International Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610), where the panel held that there was no legitimate interest where there was no evidence that respondent was commonly known by the domain name). The use of the Disputed Domain Name to redirect to third-party websites is not a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. (See InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings,WIPO Case No. D2017-1072), finding redirection to third party websites not to be a bona fide offering of goods and services.) Further, the GEICO Mark is not a name that Respondent would have legitimately and randomly chosen to use. (See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Finally, the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. (See InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings,WIPO Case No. D2017-1072 and Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493, holding that “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.) Given the nature of the Disputed Domain Name, the uniqueness of Complainant’s name – and its fame, and the fact that the Domain Name does not have any active website other than to redirect to third-party websites, this negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith The Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of the Complainant’s rights in the GEICO Mark. It is not credible that the Respondent was unaware of the Complainant’s activities and the existence of the GEICO Mark when it registered the Disputed Domain Name that incorporates the Complainant’s well-known mark in its entirety. As the Complainant argued: “Even a simple Internet search would have revealed Complainant’s extensive use of the GEICO Mark as a source identifier”. The Respondent’s use of the GEICO Mark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so is evidence of bad faith. (See SANOFI-AVENTIS v. Andris Maupalis,WIPO Case No. D2007-1341, finding: “It is evidence of bad faith that the Respondent used the Complainant’s trademark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so”.) Further, the use of the website to link to third-party websites featuring services provided by the Complainant’s competitors is also evidence of bad faith. (See Decathlon v. Inamullhak CM,WIPO Case No. D2019-1622, finding the respondent’s use of the disputed domain name to point to links offering competing goods was diverting Internet users for commercial gain under the Policy, paragraph 4(b)(iv) and was disruptive to the complainant’s business under Policy, paragraph 4(b)(iii).) The Panel can infer that the Disputed Domain Name was registered and used by the Respondent in bad faith in light of the Respondent’s use of the Disputed Domain Name for a website displaying commercial links (including links that specifically reference Complainant's business) and indicating that the Disputed Domain Name is for sale. (See Société Anonyme des Galeries Lafayette v. Eac International Co., Limited Jiaai,WIPO Case No. D2014-0647.) The purported disclaimer on the website does not release the Respondent from a finding of bad faith. (See Sociedad Anónima Importadora y Exportadora de la Patagonia v. Moniker Privacy Services / Leonardo Ciriani,WIPO Case No. D2017-0494, finding that in light of the listing of the domain name for sale and the disclaimer language, the primary use of the domain name was to offer it for sale; and Mozilla Foundation and Mozilla Corporation v. Whois Agent, Whois Privacy Protection Service, Inc. / John Morzen,WIPO Case No. D2016-1489, finding: “The fact that a disclaimer is displayed on the website does not cure Respondent’s bad faith, as Respondent has achieved his objective of diverting traffic away from Complainant to his own website by taking advantage of Complainant’s rights.”) Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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, Haig Oghigian
Sole Panelist
Date: August 27, 2020
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