The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is 尹军 (yinjun), China. 2. The Domain Name and Registrar
The disputed domain name 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 name. On December 10, 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 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 January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on February 10, 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 in class 36, including United States Registration No. 763,274 for GEICO registered on January 14, 1964, United States Registration No. 2,601,179 for GEICO mark registered on July 30, 2002, United States Registration No. 2,982,260 for GEICO AUTO REPAIR XPRESS registered on August 2, 2005 and United States Registration No. 3,262,263 for GEICO MOTORCYCLE registered on July 10, 2007. It also uses the website “www.geico.com” to promote and provide information about its insurance services. The Respondent is 尹军 (yinjun), China. The disputed domain name was registered on November 12, 2020, and resolves to an active webpage where the disputed domain name is being offered for sale for USD 1,500. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the GEICO mark regardless of the additional terms as they incorporate the distinctive GEICO mark. The addition of the acronym “http” does not dispel the disputed domain name from being identical or confusingly similar to the GEICO mark as the term is commonly used in connection with secured and trusted websites. The use of the disputed domain name 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 name. The Respondent’s misappropriation of the GEICO mark in the disputed domain name was no accident. The Respondent could have no legitimate interest in the disputed domain name 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 name. The Respondent’s illicit registration and use of the disputed domain name long after the registration of Complainant’s trade mark rights is evidence of bad faith registration and use of the disputed domain name. The Respondent’s use of a privacy protection service to conceal its identity suggests bad faith. The fact that the disputed domain name is advertised for a minimum sale value of USD 1,500 which is far in excess of any out-of-pocket expenses related to the disputed domain name strongly suggests that the Respondent was aware of the Complainant’s trade mark and its business when it registered the disputed domain name and that the Respondent’s intention in registering the disputed domain name was for financial gain in bad faith. The Respondent’s failure to respond to the Complainant’s cease and desist letter further supports a finding of bad faith. 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 the 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 name is English; (b) the content on the webpage under the disputed domain name is English, which supports an inference that the Respondent is able to understand 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 name and the content of the resolved website 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 his/her 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 the disputed domain name is comprised of the GEICO mark in its entirety. The positioning of the GEICO mark in the disputed domain name is 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, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the confusing similarity of the domain name from the registered trademark under the first element of the Policy. As such, the Panel finds the additional element “http” does not preclude a finding of confusing similarity between the GEICO mark and the disputed domain name. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that 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 name, 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 name or reasons to justify the choice of the term “geico” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. The Respondent is currently offering the disputed domain name for sale. However, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s GEICO mark or register the disputed domain name. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of 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 name. C. Registered and Used in Bad Faith The Complainant’s GEICO mark had been registered well before the registration of the disputed domain name. 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 name 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 name incorporates the Complainant’s famous GEICO mark creating a presumption of bad faith. In addition, the disputed domain name is being offered for sale for USD 1,500 on the resolved website, which is in excess of the normal costs for registering and maintaining a domain name. The absence of circumstances indicating that the Respondent has rights or legitimate interests in the disputed domain name leads the Panel to conclude that the Respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the Complainant’s trade mark. In this case, the Panel finds the sale of the disputed domain name as evidence of bad faith registration and use. See section 3.1 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 name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is 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 name Rachel Tan
Sole Panelist
Date: February 24, 2021
Full & Egal Universal Law Academy