The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is 石磊 (shilei), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 10, 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 14, 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 in English on December 14, 2020. On December 14, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 14, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on February 1, 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 services provider based in the United States which has provided insurance services since 1936. It offers different types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. It has insured more than 28 million vehicles and has over 40,000 employees. The Complainant has been trading under the GEICO trade mark for nearly 80 years. It owns several trade mark registrations in the United States incorporating the GEICO mark, including Registration No. 763,274 for GEICO registered on January 14, 1964, Registration No. 2,601,179 for GEICO mark registered on July 30, 2002, Registration No. 2,982,260 for GEICO AUTO REPAIR XPRESS registered on August 2, 2005, and Registration No. 3,262,263 for GEICO MOTORCYCLE registered on July 10, 2007 in class 36. It also uses the website “www.geico.com” to sell and provide information about its insurance services, and uses the website “www.geicogreenroom.com” as part of a marketing promotion to connect fans to country artists. The Respondent is 石磊 (shilei), China. The disputed domain names were registered on November 8, 2020. At the time of the filing of the Complaint, the disputed domain names redirected to pop up pages that require users to download software in order to reach the websites. At the day of decision, the disputed domain names all resolved to active webpages that have links to different advertisements related to insurance and interior design services. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the disputed domain names is identical or confusingly similar to the GEICO mark regardless of the additional terms as they incorporate the distinctive GEICO mark. The use of the disputed domain names is intended to impersonate the Complainant, and intercept and confuse consumers who are looking for bona fide and well-known products or services or authorized partners of the Complainant. The Complainant further alleges that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GEICO mark in a domain name or in any other manner. The Respondent has never been known by the disputed domain names. The Respondent’s misappropriation of the GEICO mark in the disputed domain names was no accident. The Respondent could have no legitimate interest in the disputed domain names since it is not a name that the Respondent would have legitimately and randomly chosen to use. The Complainant finally asserts 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 names. The Respondent’s illicit registration and use of the disputed domain names long after the registration of Complainant’s trade mark rights is evidence of bad faith registration and use of the disputed domain names. The presumption that the Respondent registered the disputed domain names in bad faith is supported by the fact that the Complainant’s authorized “www.geicogreenroom.com” website is one letter away from the disputed domain names, the Respondent has used the disputed domain names to induce Internet users to download malware, and the Respondent has failed to respond to Complainant’s cease and desist letter. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for each disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) the language of the disputed domain names is English; (b) the content on the webpages under the disputed domain names is in English; and (c) ordering the Complainant to translate the Complaint would lead to potential unfairness or unwarranted delay. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of Roman letters for the disputed domain names, and the English content of the webpages under the disputed domain names, indicates some familiarity with the English language; (c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the GEICO mark. The Panel notes each of the disputed domain names is comprised of the GEICO mark in its entirety. The positioning of the GEICO mark at the front of the disputed domain names makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the additional elements “geenroom”, “greenrom”, “greenroon”, and “grenroom” do not preclude a finding of confusing similarity between the GEICO mark and the disputed domain names. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the similarity of the domain name from the registered trademark under the first element of the Policy. The Panel notes that the term “green room” is referred to in the Complainant’s marketing promotion activity at the website “www.geicogreenroom.com”. The additional elements referenced above, which are typographical errors of the term “green room”, do not affect the similarity between the disputed domain names and the Complainant’s GEICO mark. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the GEICO mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “geico”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in any of them. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s GEICO mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s GEICO mark had been registered well before the registration of the disputed domain names. Through extensive use and advertising, the Complainant’s GEICO mark is known throughout the world. Moreover, the term “geico” is not merely a name. Search results using the key word “geico” on the Baidu and Google search engines direct Internet users to the Complainant and its products/services, which indicates that an exclusive connection between the GEICO mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s GEICO mark when registering the disputed domain names or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names incorporate the Complainant’s famous GEICO mark plus a typographical error of the term “green room” that is related to the Complainant’s promotional website, thus, creating a presumption of bad faith. In addition, the websites of the disputed domain names currently redirect users to websites of the Complainant’s competitors and the Panel finds that constitutes evidence of bad faith registration and use. See section 3.1.4 of the WIPO Overview 3.0. Furthermore, the Complainant provided evidence of the apparent use of disputed domain names for malware distribution, which supports a finding of bad faith. See section 3.4 of the WIPO Overview 3.0. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 names, Rachel Tan
Sole Panelist
Date: February 15, 2021
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