The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (the “United States”), represented by Burns & Levinson LLP, United States.
The Respondent is D.L. Webb, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 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 October 14, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on December 2, 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 date of the Domain Name registration was confirmed by the Registrar to be January 13, 2006. The trademark GEICO serves as house-mark of the Complainant and is protected as a registered trademark in the United States. The Complainant owns, inter alia, United States trademark No. 763, 274 for GEIGO registered on January 14, 1964, covering services in class 36, related to insurance services. In addition, the Complainant has established a website located at “www.geico.com”, which the Complainant uses to promote and sell its insurance services, and which reflects its trademark in order to promote its insurance products and services. The Complainant has provided evidence that the GEIGO trademark has also had extensive coverage and use. The trademark predates the registration date of the Domain Name registration for a very broad variety of goods and services in the insurance industry. The Panel also conducted an independent search to determine that the Domain Name resolves to a parking page with links to advertisements for various insurance services, which appear to be “pay-per-click”. 5. Parties’ Contentions A. Complainant The Complainant contends that GEICO is a well-known insurance company that has provided insurance services since 1936. GEICO offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. GEICO has been trading under the trademark GEICO (the “GEICO Mark”) for nearly 80 years and owns exclusive rights in such. The Complainant’s rights are further evidenced by its numerous federally registered trademarks and service marks that wholly incorporate the GEICO Mark or iconic visual representations thereof. The Complainant has made extensive use of its distinctive GEICO Mark in connection with its services. The company invests large sums to promote and develop the GEICO Mark through television, print media and the Internet. As a result of such efforts, the GEICO Mark is a powerful, recognizable symbol of the Complainant’s goodwill and excellent reputation. Through extensive use and promotional activities using the GEICO Mark, it has become uniquely associated with the Complainant and its services. In fact, GEICO has over 17 million policies and insures more than 28 million vehicles. GEICO also has over 40,000 employees, and is one of the fastest-growing auto insurers in the United States. The Domain Name consists entirely of the GEICO Mark adding only a common typographical error of the generic or descriptive term “insurance”– insuranec– and a generic Top Level Domain (“gTLD”). The Domain Name fully incorporates the GEICO Mark. The mere addition of a common misspelling of the descriptive or generic term “insurance”– insuranec– is insufficient to prevent similar confusion of the Domain Name with the Complainant’s registered mark. The Domain Name currently redirects to an inactive website containing a list of apparent pay-per-click links to unrelated third-party websites, including to websites of the Complainant’s competitors. Based on the Respondent’s adoption and use of the Domain Name that incorporates the GEICO Mark, in its entirety, the Complainant believes that the Respondent is using and has used the Domain Name to intentionally attempt to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to the Respondent’s own webpage by creating a likelihood of confusion with the Complainant, all for commercial gain. The Complainant argues that the Respondent’s misappropriation of the GEICO Mark in the Domain Name was no accident. Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. Indeed, there is no evidence that the Respondent has any legitimate claims to the Domain Name and any current or conceivable future use of the Domain Name violates the Policy. This unauthorized use of the Domain Name by the Respondent severely harms the Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the United States and around the world. Additionally, the fact that the Domain Name resolves to a website containing apparent “pay-per-click” hyperlinks to third-party websites featuring services provided by the Complainant’s competitors is also patent evidence of bad faith. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark GEICO, in respect of a very broad range of insurance goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the word ““insurance” misspelled as “insuranec” adds to the confusion as the Complainant is in that field of activity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and constitutes opportunistic bad faith registration and use. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the 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 Domain Name; and (iii) That the Domain Name has been registered and 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 Domain Name. 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. Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for GEICO. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the term “insurance”, even if misspelled as a typo “insuraec”, to the Domain Name does not change the overall impression of the Domain Name being connected to the trademark of the Complainant, being the latter recognizable. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005 0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded by the Complainant’s arguments that the Respondent’s Domain Name is targeted to similar services to Internet users, and thus, the Respondent intentionally attempts to attract Internet users for commercial gain. The addition of the term “insuranec” as a typo of “insurance” only increases the risk of confusion and the probability is that they were meant to confuse Internet users as to source or affiliation. The Panel finds that the registration of the Domain Name based on a well-established mark at the time of registration and the Respondent’s use of the Domain Name to redirect Internet users to a parking page advertising links to insurance leads to a finding of bad faith squarely within the meaning of the Policy. The Domain Name was selected in knowledge of the Complainant’s mark and brand, and further the Domain Name was chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. In light of this knowledge, the Respondent uses the Domain Name to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues. Panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing revenues through click to Respondent evidences bad faith. Indeed, Respondent is taking undue advantage of Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy (F Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956, L’Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231, and Alstom v. FM Laughna,WIPO Case No. D2007-1736). Several UDRP panels concurred that “the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith” (SNCF v. Comdot Internet Services Private Limited./PrivacyProtect.org,WIPO Case No. D2008-0025, and Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591). The Panel agrees with the Complainant that due to the well-known and distinctive character and reputation of the GEICO Mark, the Respondent must have been aware of the Complainant and its GEICO Mark when registering the Disputed Domain Name. This finding is consistent with previous panels which have considered the Complainant’s mark to be “well-known” or “famous”. See e.g. Government Employees Insurance Company (“GEICO”) v. Jun Yin,WIPO Case No. DCO2020-0037 (August 29, 2020) (finding the GEICO Mark so well-known that when a “disputed domain name entirely reproduces the distinctive GEICO mark, […][it is] highly unlikely without knowledge of the Complainant or its marks”). And further that the Respondent’s use of the GEICO Mark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so is evidence of bad faith. See e.g. SANOFI-AVENTIS v. Andris Maupalis,WIPO Case No. D2007-1341 (December 3, 2007). In light of the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark GEICO and uses it for the purpose of misleading and diverting Internet traffic, and to capitalize on any confusion with the Complainant. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name Ellen B Shankman 1 Noting the change of the Registrar’s name, the Panel orders that the Decision be notified to the email addresses of “Uniregistrar Corp” and of “GoDaddy Online Services Cayman Islands Ltd”.
Sole Panelist
Date: December 14, 2020
Full & Egal Universal Law Academy