The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“USA”), represented by Burns & Levinson LLP, USA.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 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 July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 27, 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 an insurance company that has provided insurance services since 1936 under the GEICO trademark. It is the owner of the domain name - USA trademark registration No. 763,274 for the word mark GEICO, registered on January 14, 1964 and successively renewed, in International classes 35 and 36; and - USA trademark registration No. 2,982,260 for the word mark GEICO AUTO REPAIR XPRESS, registered on August 2, 2005, successively renewed, in International class 36. The disputed domain names The Complainant asserts to be a well-known insurance company providing insurance services under the GEICO trademark for nearly 80 years, having invested large sums to promote and develop it, leading GEICO to become a powerful and recognizable symbol of the Complainant’s goodwill and reputation. Also according to the Complainant, it has over 17 million policyholders and insures more than 28 million vehicles, presently employing over 40,000 employees and having become one of the fastest growing auto insurers in the USA. Under the Complainant’s view, the first disputed domain name reproduces its trademark with the addition of a pejorative prefix, which is insufficient to distinguish the disputed domain name from the Complainant’s well-known trademark. In the second disputed domain name the addition of a descriptive phrase is also insufficient to prevent a finding of confusing similarity when the trademark is recognizable in the disputed domain name. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names given that: (i) the Complainant has not authorized the Respondent to use or register the disputed domain names, the Respondent not having any connection or affiliation with the Complainant, nor any any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner; (ii) the Complainant’s GEICO trademark is famous, with the registration of the disputed domain names being no accident; (iii) the use made of the disputed domain names to redirect Internet users to third-party websites cannot be considered a legitimate interest; and (iv) there is no legitimate use to which the disputed domain names could be put. Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent should be deemed to have constructive notice of the Complainant’s famous GEICO trademark, which it has targeted to unduly profit by selling the disputed domain names in excess of any out-of-pocket expenses directly incurred in registering them, the first disputed domain name having been offered for sale, and no genuine use of the disputed domain names having been made throughout the entire period of their registration. This leads to the conclusion that the Respondent registered them for the sole purpose of selling them to make an unlawful financial profit in view of the high reputation and very substantial goodwill associated with the Complainant’s trademark. In addition to the above, according to the Complainant, the Respondent appears to be a “serial cybersquatter” having been implicated in previous UDRP decisions, including those filed by the Complainant, for the same conduct, further evidencing bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the registered GEICO trademark. The addition of a pejorative prefix, in the first disputed domain name (“dont go to”), and of generic terms (“true car”) in the second disputed domain name, does not avoid a finding of confusing similarity under the Policy given that the Complainant’s trademark GEICO is entirely reproduced in both of the disputed domain names. It is a well-accepted understanding that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, 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, in spite of not having acquired 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. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the Complainant indeed states that it has not authorized the Respondent to use or register the disputed domain names, the Respondent not having any connection or affiliation with the Complainant, nor having received any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain names, or the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, corroborates the absence of a right or legitimate interest in the disputed domain names. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of a trademark 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 names; or (ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the 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 names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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. The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names; (ii) the Respondent offered the first disputed domain name for sale for the amount of USD 500 which is an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name; (iii) the use of the second disputed domain name in connection with a parked webpage displaying links to competitors of the Complainant and/or sponsored links; and (iv) the well-known status of the Complainant’s trademark, the nature of the disputed domain names (reproducing the entirety of the Complainant’s trademark), and the Respondent’s intention to unduly profit from the value of the Complainant’s trademark, suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain names in bad faith, with the implausibility of any good faith use to which the disputed domain names may be put. For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The third element of the Policy has therefore been established. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: September 1, 2020
Full & Egal Universal Law Academy