The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “U.S.”), represented by Burns & Levinson LLP, United States.
The Respondent is Carolina Rodrigues, Panama. 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 28, 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 September 29, 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 September 30, 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 October 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2020. The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 3, 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, Government Employees Insurance Company (“GEICO”), is an insurance provider incorporated under the laws of the state of Maryland, United States. It has provided insurance services since 1936 and has over 40,000 employees worldwide. Amongst others, the Complainant provides numerous types of insurance services, such as automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurances. In total, the Complainant holds over 17 million policies and insures, for example, more than 28 million vehicles. The Complainant is the owner of several U.S. trade marks for the designation “GEICO” for services in class 36: Trade mark Registration number Country Registration Date Class(es) GEICO 763,274 US January 14, 1964 36 GEICO 2,601,179 US July 30, 2002 36 GEICO AUTO REPAIR XPRESS 2,982,260 US August 2, 2005 36 GEICO MOTOERCYCLE 3,262,263 US July 10, 2007 36 The Complainant also owns and operates a website under domain name The Complainant uses the website under the aforementioned domain name to promote and sell its insurance services. Additionally, the website under The disputed domain name According to the evidence submitted by the Complainant, the disputed domain name resolves to an inactive website containing a list of pay-per-click links to unrelated third-party websites, including to websites of the Complainant’s competitors. The Complainant has provided evidence that the disputed domain name has been listed for sale. 5. Parties’ Contentions A. Complainant The Complainant contends that the trade mark GEICO is a distinctive, powerful and recognizable brand with an excellent reputation. The Complainant further contends to have invested significant financial means into the GEICO brand in order to promote and develop the brand through television, print media and the Internet. It first argues that the disputed domain name Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant. Accordingly, the Respondent has not received any license or consent, express or implied, to use the GEICO mark in a domain name or in any other manner. Furthermore, the Complainant assumes that the Respondent has never been known by the disputed domain name. It further states that the use of the disputed domain name to redirect Internet users to third-party websites is not a legitimate interest. Finally, the Complainant claims that the disputed domain name has been registered and is being used in bad faith. It argues that, due to the well-known and distinctive character and reputation of the mark GEICO, the Respondent must have been aware of the Complainant and its brand when registering the disputed domain name. The Respondent’s use of the mark was intended to draw Internet users attention to the Respondent’s website, although knowing that the Complainant had not authorized the use of the brand. The Complainant further states that the Respondent had to expect that any use of the disputed domain name would be detrimental to the Complainant, since the disputed domain name fully comprises the mark GEICO. Moreover, it would have been easy for the Respondent to become aware of the GEICO mark through searches of the USPTO records that are readily accessible online. The Complainant therefore assumes that the Respondent was deemed to have taken notice of the Complainant’s trade mark rights by virtue of the federal trade mark registrations. In addition, the Complainant argues that bad faith is also evidenced by the fact that the disputed domain name resolves to a website containing apparent pay-per-click hyperlinks to third-party websites featuring, inter alia, services provided by the Complainant’s competitors. Lastly, the fact that the Respondent has listed the disputed domain name for sale justifies, in the Complainant’s view, the assumption that the Respondent’s sole purpose in registering and holding the disputed domain name is resale and thus the achievement of a financial gain. This also underlines the assumption that the Respondent must have been aware of the Complainant’s GEICO trade mark and its business when registering the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that (i) the disputed domain name is 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 name; (iii) the Respondent has registered and is using the disputed domain name in bad faith. By the Rules, paragraph 5(c)(i), it is expected of a respondent to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”. In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case. In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[i]n the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.” In the present administrative proceeding, the Respondent has chosen not to submit a response. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable. A. Identical or Confusingly Similar The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trade mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trade mark rights in the mark GEICO which predate the registration of the disputed domain name. The disputed domain name consists of the term “geico9” plus the generic Top-Level Domain (gTLD) “.com”. The Panel finds that the disputed domain name is confusingly similar to the GEICO trade marks. The disputed domain name contains the Complainant’s trade mark GEICO in its entirety and only differs in the number 9 at its ending. The additional number 9 at the end of the disputed domain name does not prevent a finding of confusing similarity to the trade mark of the Complainant (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In view of the above, the Panel finds that also the added gTLD “.com” is not apt to avoid confusion with the Complainant’s trade marks. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name in order to place the burden of proof on the Respondent (See Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Paragraph 4(c) of the Policy contains, in particular but without limitation, circumstances that may demonstrate when a respondent has rights or legitimate interest in the use of a domain name. The list includes: (i) the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice of the dispute; (ii) being commonly known by the domain name; or (iii) the making of a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. There is no evidence that the Respondent was using or making demonstrable preparations to use the disputed domain name or a name corresponding to that name in connection with a bona fide offering of goods or services before its notice of the dispute. Nor is there any evidence that the Respondent is being commonly known by the disputed domain name. Instead, the Complainant has provided evidence that the Respondent is using the disputed domain name with the intent for commercial gain to misleadingly divert the Complainant’s customers. The website contains clickable links offering, inter alia, third party insurance services. These offers conflict with those genuinely offered by the Complainant under the brand GEICO. In the absence of the Complainant’s authorization to use the mark GEICO, the only inference is that the disputed domain name is intended to mislead customers into believing that they were dealing with the Complainant. Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name. Hence, the burden of production is on the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing. Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used a disputed domain name in bad faith. Whether a domain name is used in bad faith for the purposes of the Policy may be determined by evaluating the factors set out under 4(b) of the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; (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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s website or location. The Complainant’s GEICO trade mark is fully incorporated into the disputed domain name. The trade mark is fanciful and not descriptive of any goods or services. Therefore, the Panel finds that the Respondent must have been aware of the Complainant’s GEICO trade marks and its business when it registered the disputed domain name. It would have been a small effort for the Respondent to conduct a simple trade mark or even just Internet search in order to establish the Complainant’s precedent rights in and to the GEICO trade mark. By the time of the decision, the disputed domain name was not resolving to an active website. However, the consensus view amongst UDRP panels is that “the use of a domain name including a blank page or ‘coming soon’ page does not prevent a finding of the bad faith under the doctrine of passive holding” (see section 3.3 of the WIPO Overview 3.0). While there is no evidence that there has been an attempt by the Respondent to directly sell the disputed domain name to the Complainant or one of its competitors pursuant to paragraph 4(b)(i) of the Policy, there has certainly been an attempt to attract, for commercial gain, Internet users to the website under the disputed domain or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location pursuant to paragraph 4(b)(iv) of the Policy. The Respondent was, in all likelihood, trying to redirect traffic intended for the Complainant’s website to its own for commercial gain. It is apparent from the evidence submitted that the disputed domain name resolved to a website containing pay-per-click hyperlinks to third-party websites featuring services provided by the Complainant’s competitors. Presumably, these websites are an income source via click-through for the Respondent (see Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391). According to the foregoing, the Panel comes to the conclusion that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) 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, Andrea Jaeger-Lenz
Sole Panelist
Date: November 12, 2020
Full & Egal Universal Law Academy