The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Hajaj Omar A A, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 July 22, 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 amendment to the Complaint on July 22, 2020. The Center verified that the Complaint together with the amendment to 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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on August 26, 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 United States insurance company active since 1936 and offering numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. The Complainant is the owner of several trademark registrations for GEICO and GEICO MOTORCYCLE, including the following, as per trademark certificates submitted as annexes to the Complaint: - United States trademark registration No. 763274 for GEICO (word mark), registered on January 14, 1964 in international class 36; The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name The Complainant underlines that the addition of the term “quote” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks, since such term is highly associated with the Complainant’s services, as its website allows visitors to obtain online quotes to get an estimate for the cost of a user’s insurance service. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way connected to, or affiliated with, GEICO, and no license or consent, express or implied, has ever been granted to it for the use of the trademark GEICO whether in connection with a domain name or other. Moreover, the Complainant states that the Respondent has never been known by the disputed domain name, that the Respondent was very likely aware of the Complainant’s trademark when registering the disputed domain name and that it had probably registered it with the intent of creating an impression or association with the Complainant, as the use of the disputed domain name is also in the same field of activity as the Complainant as far as information related to motorcycles is concerned. With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent was acting in bad faith when registering the disputed domain name, as it is inconceivable that the Respondent was unaware of the trademark GEICO since even a simple Internet search would have revealed the Complainant’s extensive use of the trademark GEICO as a source identifier. Moreover, the Complainant contends that the Respondent’s use of the trademark GEICO alone to attract Internet users to its website, knowing that the Complainant had not authorized it to do so, is in itself evidence of bad faith. The Complainant further emphasizes that the Respondent’s references to the Complainant’s field of activity on the website to which the disputed domain name resolves, demonstrates that the Respondent was obviously aware of the Complainant’s trademarks at the time of registering the disputed domain name. The Complainant underlines that the Respondent also failed to reply to the cease and desist letter sent by the Complainant, which only serves as further proof of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademarks GEICO and GEICO MOTORCYCLE based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex C to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as indicated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. In the case at hand, the Complainant’s trademark GEICO is entirely reproduced in the disputed domain name, with the mere addition of the terms “motorcycle” and “quote” and of the gTLD “.online”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark GEICO in which the Complainant has established rights. The Panel also finds that the disputed domain name is confusingly similar with the trademark GEICO MOTORCYCLE since the Complainant’s trademark is entirely encompassed in the disputed domain name and, as indicated in the paragraph above, the term “quote” and the gTLD “.online” does not prevent a finding of confusing similarity with the Complainant’s trademark and the latter can be disregarded for the purpose of this assessment. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of a domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name might be commonly known by the disputed domain name. The Panel notes that the disputed domain name is pointed to a blog site that, despite the indication, in the “About us” section, that the blog was created on June 12, 2020 (before the registration of the disputed domain name!) due to the interest “in Geico Motorcycles in general”, is mainly dedicated to the publication of generic posts about motorcycles and includes only one post only related to the Complainant’s services, dated June 26, 2020 and displayed at the top of the home page, reading “GEICO Motorcycle Insurance Quotes , How to Find GEICO Quotes Online”. In view of the above, of the absence of a disclaimer as to the lack of affiliation with the Complainant and considering the nature of the disputed domain name (fully incorporating the Complainant’s marks), the Panel finds that users could be misled into believing that the Respondent’s website and the information displayed therein might be controlled by, affiliated with, or approved by the Complainant. Moreover, in absence of a Response, the Panel finds that, on balance of probabilities, the Respondent has used the disputed domain name to attract and divert users looking for quotes for the Complainant’s insurance services to its own website. In light of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Respondent has no right or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademarks GEICO and GEICO MOTORCYCLE in connection with the Complainant’s insurance services, ii) the well-known character of the trademark and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind. Furthermore, the circumstance that the disputed domain name has been pointed to a blog featuring the Complainants’ trademark and providing information about the Complainant’s services demonstrates that the Respondent was indeed well aware of the Complainant and its trademark. In fact, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant. In light of the above-described use of the disputed domain name made by the Respondent, the Panel finds that, on the balance of probabilities, the Respondent did not intend to use the disputed domain name in connection with a genuine blog site dedicated only to the Complainant’s services but, instead, to attract Internet users looking for quotes for the Complainant’s insurance services to its own website, likely for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website according to paragraph 4(b)(iv) of the Policy. The Panel also finds that the Respondent’s failure to respond to the Complainant’s cease-and-desist letter and to the Complaint is an additional evidence of its bad faith. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) 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 disputed domain name Luca Barbero
- United States trademark registration No. 2601179 for GEICO (word mark), registered on July 30, 2002 in international class 36;
- United States trademark registration No. 3262263 for GEICO MOTORCYCLE (figurative mark), registered on July 10, 2007 in international class 36;
Sole Panelist
Date: September 14, 2020
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