The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name <0geico.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 2, 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 November 2, 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2020.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 8, 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 an insurance company seated in the United States.
The Complainant holds several trademarks in the United States consisting in all or in part of the term “geico”, an acronym under which it carries outs its activities, all registered under class 36 of the Nice Classification related to insurance services, namely:
- GEICO: United States Trademark No. 0763274, registered on January 14, 1964, but first used in commerce in 1948.
- GEICO: United States Trademark No. 2601179, registered on July 30, 2002, but first used in commerce as of December 31, 1948.
- GEICO AUTO REPAIR XPRESS: United States Trademark No. 2982260, registered on August 2, 2005, but first used in commerce as of March 14, 2004.
- GEICO MOTORCYCLE: United States Trademark No. 3262263, registered on July 10, 2007, but first used in commerce as of January 31, 2005.
The Complainant further promotes and carries out its activities online through its website “www.geico.com”.
On September 18, 2020, the Respondent registered the disputed domain name <0geico.com>. The WhoIs database related to the disputed domain name expressly mentions that “This domain is listed for sale at one of our partner sites”. Further, the disputed domain name is being used to redirect users to various third party websites that are not affiliated with the Complainant, such as, AliExpress Online Shopping. 5. Parties’ Contentions A. Complainant
The Complainant first holds that <0geico.com> is confusingly similar to its GEICO trademark as it entirely incorporates such trademark, and that the mere addition of a “0” does not exclude the resulting likelihood of confusion.
The Complainant then considers that the Respondent does neither have rights nor legitimate interests in the disputed domain name. The Respondent has no connection with the Complainant, which has never authorized the Respondent to exploit its GEICO trademark.
The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. Considering the strong reputation enjoyed by the Complainant, the Complainant is of the view that the Respondent must have been aware of its GEICO trademark when it registered <0geico.com>.
As a result, the Respondent should have expected that any use of the disputed domain name would cause harm to the Complainant, all the more than the Respondent was deemed to have constructive notice of the Complainant’s trademarks as a result of the United States federal registrations. The Respondent’s bad faith is all the more obvious than it has repeatedly been named as a respondent in several recent UDRP cases decided in the Complainant’s favor, thereby establishing a pattern of the Respondent’s clear abusive conduct targeting the Complainant’s GEICO trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] 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.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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 proves to hold several trademarks consisting in all or in part of the term “geico”.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added element, such as in the present case with a “0”, does not avoid a finding of confusing similarity.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several GEICO trademarks. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Panel notes that the Complainant began using its GEICO mark in 1948, and that it owns registrations for this mark in the United States since at least 1964, while the disputed domain name was registered over 50 years later, in 2020.
In addition, previous panels have found that the Respondent had registered and used in bad faith several domain names confusingly similar to the Complainant’s mark GEICO (see, inter alia, Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1723; Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1425; Government Employees Insurance Company (“GEICO”) v. Registration Private, Domain By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0764).
As a result, there is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks when it registered the disputed domain name.
The Complainant has shown that the disputed domain name redirects to various third party websites that are not affiliated with the Complainant, such as, AliExpress Online Shopping. In doing so, the Respondent is creating a likelihood of confusion with the Complainant’s mark. The Complainant also has shown that the disputed domain name is being offered for sale on the Internet most likely above the costs directly related to its registration. According to the Policy, paragraph 4(b)(i), this is an additional circumstance of registration and use in bad faith. Furthermore, the Respondent appears to have been engaged in a pattern of registering domain names targeting and infringing upon the Complainant’s trademarks, cases in which the Respondent has constantly been ordered to transfer the domain names in favor of the Complainant (see Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; Government Employees Insurance Company (“GEICO”) v. Registration Private, Domain By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, supra).
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used 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 disputed domain name <0geico.com> be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: December 11, 2020
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