The Complainant is Government Employees Insurance Company (GEICO), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Private Registration, NameBrightPrivacy, United States, / choonsik lee, Republic of Korea, / Nam Youngwoo, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 August 7, 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 August 11, 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 August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Center sent the Notification of Respondent Default on September 7, 2020. The Center appointed Antony Gold as the sole panelist in this matter on October 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 provides a variety of insurance services including automobile, motorcycle, homeowner and flood insurance. It presently insures over 28 million vehicles and has over 40,000 employees. The Complainant was established in 1936 and has been trading under the mark GEICO for almost 80 years. It owns many trade marks to protect this trading style including, by way of example only, United States, Registration number 763,274, service mark, for GEICO in class 36, registered on January 14, 1964. The Complainant has also established a website at “www.geico.com” which it uses to promote and sell its insurance products. The disputed domain name was registered on November 11, 2019. It resolves to a webpage containing pay-per-click (“PPC”) links to third-party websites such as “Homeowner Insurance”, “Apartment Renters Insurance” and “Business Insurance”. The webpage also contains a notice: “The domain insurancegeico.com may be for sale. Click here to inquire about this domain”. On July 31, 2020, the Complainant sent the (then) registrant, Nam Youngwoo, an email requesting transfer to it of the disputed domain name. Two responses were received. The first read: “I want to give you this domain. I want to know how to give you. Just pay a small fee”. The second read: “Doesn’t it cost you to dispute domains? If you pay me that much, you will have a domain without dispute”. The identity of the registrant was subsequently hidden behind a privacy shield. It has now been established, through the registrant details provided by the Registrar that a Choonsik Lee is the current registrant of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to its GEICO trade and service marks. Combining the Complainant’s trade mark with the work “insurance” does not avoid a finding of confusing similarity and this has been confirmed by decisions of earlier UDRP panels which have considered other complaints under the Policy filed by the Complainant. The Complainant says also that the Respondent has no rights or legitimate interests in the disputed domain name. It has no connection or affiliation with the Complainant, nor has it received any license or consent to use its GEICO mark, whether in a domain name or in any other manner. Moreover, the Respondent has never been known by the disputed domain name. Its misappropriation of the GEICO mark in the disputed domain name was not accidental. Where a mark is famous, it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The use of the disputed domain name to redirect to third-party websites does not comprise a legitimate interest; 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. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with knowledge of the Complainant’s rights in its GEICO mark and with an intent to profit off those rights. In view of the fame of the Complainant’s mark it is inconceivable that the Respondent was unaware of it as at the date of its registration of the disputed domain name. The Respondent’s use of the Complainant’s mark to attract users to its website knowing that the Complainant had not authorized it to do so is evidence of bad faith. Additionally, the fact that the disputed domain name resolves to a website containing PPC links to third party websites featuring services provided by the Complainant’s competitors is also clear evidence of bad faith; see Decathlon v. Inamullhak CM,WIPO Case No. D2019-1622. The Respondent’s promotion that the disputed domain name may be for sale and its offer to sell it to the Complainant whilst referring to the relative cost of initiating a proceeding under the Policy strongly suggests that the Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs. Moreover, the change in the Respondent’s registration details shortly after the Complainant sent its demand letter on July 31, 2020, indicates that the Respondent sought, in bad faith, to conceal its identity and engage in cyberflight in an attempt to frustrate these proceedings. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided details of the many registered trade marks it owns for GEICO, which establish its rights in this mark. As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. The Complainant’s GEICO mark is found, complete and unaltered, within the disputed domain name and the only difference is the addition of the word “insurance” which has been placed before the mark. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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.” The Complainant’s GEICO trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Before considering the second and third elements of the Policy it is necessary to consider the Complainant’s contention that, notwithstanding that the current registrant of the disputed domain name is a Choonsik Lee, the previous registrant, Nam Youngwoo, should nonetheless be considered as remaining in effective control of it. The sequence of events which has led to this assertion is that, after the Complainant sent its email to Mr Youngwoo on July 31, 2020, requesting a transfer to it of the disputed domain name, two emails were sent by him requesting payment in return for making the transfer. The registrant details were subsequently hidden behind a privacy service although it is now evident that, by August 7, 2020, the disputed domain name had been transferred to Mr Lee. The fact that the Complainant’s email of July 31, 2020, triggered two requests for payment by Mr Youngwoo to the Complainant followed by the use of a privacy service and the transfer by Mr Youngwoo to Mr Lee of the disputed domain name, all within a few days, is very suspect. Neither of the Respondents has challenged the Complainant’s assertions and these issues, in combination, lead the Panel to conclude that the change of registrant is no more than a device intended to place obstacles in the path of the Complainant and that Mr Youngwoo remains in effective control of the disputed domain name. For ease of reference, Mr Youngwoo and Mr Lee are collectively described below as “the Respondent”. Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. So far as the first circumstance is concerned, whether the use to which the disputed domain name has been put might amount to a bona fide offering of goods and service is considered at section 2.9 of the WIPO Overview 3.0. This explains that “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The destinations to which the links on the Respondent’s home page take the Internet user are not known but links such as “Homeowner Insurance” are very likely to redirect many Internet users, who were seeking the Complainant’s products, towards competing providers of insurance services. The Respondent’s website does not therefore comprise a bona fide offering of goods and services. Moreover, offering the disputed domain name for sale in these circumstances does not comprise a bona fide offering of goods and services. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow,WIPO Case No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale, does not support a respondent’s legitimate interest under the Policy. The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character. As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The likelihood that the Respondent chose to register a domain name including the Complainant’s GEICO mark by chance and without any knowledge of the Complainant’s reputation in the field of insurance services, is remote, not least because the disputed domain name couples the Complainant’s mark with the word that most aptly describes the services it provides. This points to the Respondent’s awareness of the Complainant’s mark as at the date of registration of the disputed domain name in November 2019 and also to the Respondent’s intention to register the disputed domain name in order to take advantage of the Complainant’s repute in its mark. The fact that the only known use to which the disputed domain name has been put is to point to a page hosting links related to insurance services which compete with those of the Complainant, suggests that the Respondent did not have any other use in mind for the disputed domain name as at the date of registration and establishes that the disputed domain name was registered in bad faith. Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. The circumstances of the Respondent’s use of the disputed domain name are similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. Moreover, the Respondent’s request that the Complainant pay it a sum equivalent to the cost of bringing proceedings under the Policy in return for a transfer to it of the disputed domain name, coupled with the fact that the disputed domain name was offered for sale, points to the Respondent having acquired the disputed domain name primarily for the purpose of selling it to the Complainant for, for a sum in excess of its documented out-of-pocket costs directly related to the disputed domain name. This conduct also amounts to bad faith registration and use; see paragraph 4(b)(i) of the Policy and also Warners’ Stellian Company, Inc. v. Moniker Privacy Services and HK Domain Privacy,WIPO Case No. D2013-1886. For these reasons, 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, Antony Gold
Sole Panelist
Date: October 26, 2020
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