The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC, United States / Wenqiang Tang, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 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 December 9, 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021. The Center appointed James Bridgeman SC as the sole panelist in this matter on January 13, 2021. 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 provider incorporated under the laws of the State of Maryland, United States. The Complainant owns and uses the GEICO mark in its business and is the owner of the following service mark registrations: - United States registered service mark GEICO, registration number 763,244 registered on the Principal Register on January 14, 1964, for services now in international class 36; Both of the disputed domain names There is no information available about the Respondent except that which is provided in the Complaint and the information provided by the Registrar, in response to the request of the Center in the course of this proceeding, for verification of the registration details of the disputed domain names in which the Registrar identified the Respondent, who had availed of a privacy service to conceal his identity on the published WhoIs. 5. Parties’ Contentions A. Complainant The Complainant relies on its rights in the GEICO service mark established to its ownership of the portfolio of trademark registrations listed below and its rights at common-law acquired through its extensive use of and promotional activities using the mark providing its insurance services, with over 40,000 employees, issuing 17 million policies insuring more than 28 million vehicles in the United States. The Complainant submits that the disputed domain names are confusingly similar to the GEICO mark in which the Complainant has rights as they each fully incorporate Complainant’s mark in its entirety. The Complainant submits that the additional elements “insuranc” and “insrance” clearly common misspellings of the generic, descriptive term “insurance “and therefore insufficient to prevent confusing similarity of the disputed domain names with the Complainant’s registered mark. Acuity, Inc. v. Netsolutions Proxy Services,WIPO Case No. D2005-0564 (finding that the addition of the misspelled descriptive term “insurance” – “insurance”– to the complainant’s ACUITY trademark was not enough to avoid a finding of confusing similarity). The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names alleging that the Respondent has never been known by the disputed domain names, nor has the Respondent any connection or affiliation with the Complainant or received any licensor consent, express or implied to use the GEICO mark in a domain name or otherwise. Referring to screenshots of the websites to which the disputed domain names resolve that have been submitted as evidence in an annex to the Complaint, the Complainant submits that the Respondent has misappropriated Complainant’s service mark in the disputed domain names and using the disputed domain names to redirect Internet users to third-party websites. It is contended that such use is not a legitimate interest for the purposes of the Policy. The Complainant alleges that the disputed domain names were registered and are being used in bad faith arguing that due to the well-known and distinctive character and reputation of the Complainant’s GEICO mark, the Respondent must have been aware of the Complainant and its GEICO mark when registering the disputed domain names. Government Employees Insurance Company (“GEICO”) v. Jun Yin,WIPO Case No. DCO2020-0037 (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”). The Complainant adds that the Respondent’s use of the GEICO mark to attract Internet users to the Respondent’s websites, knowing that the Complainant had not authorized it to do so is evidence of bad faith use. SANOFI-AVENTIS v. Andris Maupalis,WIPO Case No. D2007-1341. The Complainant refers to said screenshots of the webpages to which the disputed domain names resolve which contain PPC links to third-party websites and offer the disputed domain names to the public for sale, to illustrate that the Respondent is taking advantage of the Complainant’s service mark in order to generate PPC income and endeavoring to make a profit from the sale of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires the Complainant to establish 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; 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 convincing uncontested evidence that it has rights in the GEICO service mark acquired through its ownership of the portfolio of trademark registrations listed above and the goodwill that it has established in the mark by extensive use in its insurance business issuing 17 million policies insuring more than 28 million vehicles and having 40,000 employees, The disputed domain names each contain Complainant’s GEICO mark in its entirety in combination respectively with the terms “insuranc” and “insrance” and the generic Top-Level Domain (“gTLD”) “.com” extensions. The Complainant’s service mark is the initial, dominant and only distinctive element in each of the disputed domain names. The terms “insuranc” and “insrance” are each misspellings of the generic and descriptive word “insurance” and therefore, in context, bring no distinctive character to either of the disputed domain names. The gTLD extension may be ignored in the context of this element of the Policy as they would be considered a technical element acquired for a domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Complainant has therefore succeeded the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names alleging that - the Respondent has never been known by the disputed domain names; This well-established prima facie evidence shifts the burden of production to the Respondent to prove his or her rights or legitimate interests in the disputed domain names. The Respondent has failed to discharge that burden. This Panel must therefore find that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The undisputed evidence shows that the Respondent must have been aware of the Complainant and its GEICO mark when registering the disputed domain names. Particularly given that the disputed domain names each contain an element that is a misspelling of the word “insurance” which is a direct reference to the business which the Complainant is engaged, this Panel finds that the disputed domain names were chosen and registered in order to target and take predatory advantage of the Complainant, its business and the goodwill of its GEICO service mark. The Respondent’s use of the GEICO mark to attract Internet users to the Respondent’s websites, knowing that the Complainant had not authorized it to do so is evidence of bad faith use. SANOFI-AVENTIS v. Andris Maupalis, supra. This Panel finds therefore that the disputed domain names were registered and are being used in bad faith. The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the remedies requested in the Complaint. 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 names James Bridgeman SC
- United States registered trademark GEICO, registration number 2,601,179 registered on the Principal Register on July 30, 2002 for goods in international class 36;
- United States registered service mark GEICO AUTO REPAIR XPRESS, registered on the Principal Register on August 2, 2005 for services in international class 36;
- United States registered service mark GEICO MOTORCYCLE (stylized), registration number 3,262,263, registered on the Principal Register on July 10, 2007 for services in international class 36.
- the Respondent does not have any connection or affiliation with the Complainant or has not received any licensor consent, express or implied to use the GEICO mark in a domain name or otherwise;
- the screenshots of the websites to which the disputed domain names resolve that have been submitted as evidence in an annex to the Complaint, illustrate that the Respondent has misappropriated the Complainant’s service mark in the disputed domain names and is using the disputed domain names to redirect Internet users to third-party websites; and
- such use is not a legitimate interest for the purposes of the Policy.
Sole Panelist
Date: January 14, 2021
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