The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United State” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is 杨智超 (Zhichao Yang), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2020. On July 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3, 2020, 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 the Complainant on July 3, 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 July 6, 2020. On July 3, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on July 6, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020. The Center appointed Jonathan Agmon as the sole panelist in this matter on August 12, 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 that has provided insurance services since 1936. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others and has been doing business under the GEICO mark for nearly 80 years. The Complainant owns numerous trademark registrations for the GEICO mark worldwide, including but not limited to the following in US: - GEICO (Registration No. 763,274) registered on January 14, 1964; The disputed domain names were registered on the following dates respectively and resolved to parked pages comprising pay-per-click (“PPC”) links to third-party websites featuring services provided by the Complainant’s competitors: - The Complainant’s contentions include the following: The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered GEICO mark as the disputed domain names each wholly incorporates the GEICO mark with a descriptive term or a third-party trademark along with a generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names. The Complainant further argues that the disputed domain names were registered and are being used in bad faith to redirect Internet users to commercial websites through various PPC links for commercial gain by creating a likelihood of confusion with the Complainant’s GEICO mark. For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The language of the Registration Agreements for the disputed domain names is Chinese. The Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding: (i) the disputed domain names consist of Latin letters, rather than Chinese characters; (ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; (iii) the disputed domain names resolve to websites displaying English words; and (iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding. Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names Further, it is well established that the addition of the gTLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11.1.) Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names (See WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns trademark registrations long before the disputed domain names were registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3). Furthermore, the Complainant provided evidence showing that the Respondent has been using the disputed domain names to host parked pages comprising PPC links to third-party websites featuring services provided by the Complainant’s competitors. Such use has been consistently held not to represent a bona fide offering of goods or services. (See WIPO Overview 3.0, section 2.9.) Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the GEICO mark since the year 1964. In view of the evidence filed by the Complainant, and the global widespread use of the GEICO mark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain names (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). Furthermore, the disputed domain names incorporate the Complainant’s GEICO trademark in its entirety with additional terms which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Given that the Complainant owns the domain name Given the distinctive nature of the Complainant’s GEICO mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s use of the disputed domain names to redirect unsuspecting Internet users to commercial websites through various sponsored PPC links to third-party websites featuring services provided by the Complainant’s competitors, constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain names to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s GEICO mark. The Complainant also provided evidence that it has issued demand letters to the Respondent prior to commencement of the proceedings and the Respondent has failed to respond to the Complainant. In the Panel’s view, such behavior by the Respondent constitutes further evidence of bad faith of registration and use of the disputed domain names. Based on the particular circumstances of the present case and the distinctive nature of the GEICO mark, and based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain names and the Complainant’s marks, the Respondent’s use of the disputed domain names, the fact that there is no plausible good faith use the Respondent may put the disputed domain names to, and the fact that no Response was submitted by the Respondent, the Panel draws the inference that the disputed domain names were registered and are 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 names Jonathan Agmon
- GEICO (Registration No. 2,601,179) registered on July 30, 2002;
- GEICO AUTO REPAIR XPRESS (Registration No. 2,982,260) registered on August 2, 2005; and
- GEICO MOTORCYCLE (Registration No. 3,262,263) registered on July 10, 2007;
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Sole Panelist
Date: August 26, 2020
Full & Egal Universal Law Academy