Complainant is Government Employees Insurance Company (GEICO), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / John Doe, United States and Whois Privacy Corp., Bahamas. 2. The Domain Names and Registrar(s)
The disputed domain names: The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 20, 2020, the Center transmitted by email to the First Registrar and to the Second Registrar a request for registrar verification in connection with the Domain Names. On July 20, 2020, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 Respondents of the Complaint, and the proceedings commenced on July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. Respondents did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 25, 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 Complainant is an insurance provider incorporated under the laws of Maryland in the United States. It has provided insurance services since 1936 and offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. Complainant is an auto insurer and insures more than 28 million vehicles, with over 17 million policies. Complainant has been trading under the trademark GEICO (the “GEICO Mark”) for nearly 80 years and owns numerous federally registered trademarks and service marks that wholly incorporate the GEICO Mark or visual representations, including the following: United States Trademark Registration No. 763,274 for GEICO, registered on January 14, 1964; United States Trademark Registration No. 2,601,179 for GEICO, registered on July 30, 2002; United States Trademark Registration No. 1,442,076 for GEICO DIRECT, registered on June 9, 1987; United States Trademark Registration No. 2,071,336 for GEICO DIRECT, registered on June 17, 1997; United States Trademark Registration No. 2,982,260 for GEICO AUTO REPAIR XPRESS, registered on August 2, 2005; United States Trademark Registration No. 3,262,263 for GEICO MOTORCYCLE, registered on July 10, 2007. Complainant also owns and operates a website located at “www.geico.com”, which was established to promote and sell its seven motor vehicle insurance services. The website enables computer users to: access information regarding Complainant’s insurance services, manage their policies and claims, learn more about Complainant and obtain insurance quotes. Complainant also engages in extensive advertising, featuring its name and mark, and has offices worldwide. The Domain Names were both registered on the same date, December 11, 2019. The WhoIs record provided by Complainant and confirmed by the Registrars showed that Respondent who registered At the time of the decision, the Domain Names do not resolve to active websites. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Names are confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the Domain Name; and (iii) Respondents registered and are using the Domain Names in bad faith. In particular, Complainant contends that it has trademark registrations for the GEICO marks and has rights in the domain name incorporating the GEICO mark. Complainant contends that Respondents registered and are using the Domain Names to impersonate Complainant, and to intercept and confuse consumers looking for bona fide and well-known GEICO products and services or authorized partners of Complainant. Complainant notes that it has no affiliation with Respondents, nor authorized Respondents to register or use a domain name, which is includes Complainant’s mark, and that Respondents have no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondents have acted in bad faith in acquiring and setting up the Domain Names and related websites, when Respondents clearly knew of Complainant’s rights. B. Respondents Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Consolidation of Respondents Consolidation of a complaint filed against multiple respondents should be granted when (i) the disputed domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties consistent therewith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Complainant asserts that the Domain Names are commonly owned as they were both registered on the same day, share a common name pattern “geicoloan” and use similar content and layout of websites. Complainant first attempted to contact Respondent who registered Based on the foregoing, the Panel finds that consolidation would be fair and equitable to all parties, and therefore grants the request to consolidate the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Section 4.3 of the WIPO Overview 3.0 states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondents have failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the GEICO marks, which have been registered since at least as early as 1964, which predate the registration of the Domain Names on December 11, 2019, by decades. With Complainant’s rights in the GEICO marks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the generic Top-Level Domain (“gTLD”) or the country code Top-Level Domain (“ccTLD”) in which it is registered (in this case, “.net” and “.co”, respectively), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Names are confusingly similar to Complainant’s GEICO trademark. This mark, which is fanciful and inherently distinctive, is recognizable in the Domain Names. The addition of the term “loan” in relation to the GEICO mark in the Domain Names, Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, Complainant has confirmed that Respondents are not affiliated with Complainant, or otherwise authorized or licensed to use the GEICO trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondents have not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, Respondents directed internet traffic to webpages that purport to offer personal loans and solicit Internet users to provide various valuable personal information, including email addresses, phone numbers social security numbers, and birthdates. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondents any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondents have been commonly known by the Domain Names. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondents lack any rights or legitimate interests in the Domain Names. Respondents have failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondents do not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondents’ actions indicate that Respondents registered and are using the Domain Names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online 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 your website or location.” The historical WhoIs record provided by Complainant shows that Respondents registered the Domain Names on the same day, December 11, 2019. The Panel notes that Complainant’s earliest GEICO trademark on record has been registered since January 14, 1964. Therefore, the Panel finds that Complainant’s registration and use of the GEICO marks predate the registration of the Domain Names by Respondents by several decades. Complainant is also well established and known worldwide. Therefore, Respondents were likely aware of the GEICO marks when Respondents registered the Domain Names, or knew or should have known that the Domain Names were confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Further, the Domain Names each include Complainant’s well-known GEICO trademark, with the addition of the term “loan”, which suggests Respondents’ actual knowledge of Complainant’s rights in the GEICO mark at the time of registration of the Domain Name and their effort to opportunistically capitalize on the registration and use of the Domain Names. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. Moreover, Respondents used the Domain Names to direct Internet users to a website that purports to offer personal loans and solicit users to provide valuable personal information, including email addresses, phone numbers, social security numbers, and birthdates. Such use and association of the Domain Names with offers of loans could result in causing confusion with Complainant’s business and activities. It may confuse Internet users who are looking for Complainant’s legitimate website and deceive Internet users into divulging sensitive information. The Panel finds that by using the Domain Names, incorporating Complainant’s trademark in its entirety in connection with a website to offer products or services similar to those offered by Complainant, and induce user to divulge sensitive information, Respondents have intentionally attempted to attract Internet users to their websites for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Moreover, such use of the Domain Names disrupted Complainant’s business activities. In addition to the circumstances referred to above, Respondents appear to have provided false or incomplete information in their registration information. Respondents’ failure to file a response and the undelivered Written Notice to Respondents due to false contact details are further indicative of Respondents’ bad faith. Accordingly, the Panel finds in view of the above, that Respondents have registered and used the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy. 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 Names Kimberley Chen Nobles
Sole Panelist
Date: September 8, 2020
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