The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Thongphai Kinhomeladsavong, PMC LAO SOLE CO.,LTD, Lao People’s Democratic Republic. 2. The Domain Name and Registrar
The disputed domain name The Complaint 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 Domain Name. On December 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 10, 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 10, 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Respondent sent two email communications to the Center on January 7, 2021, indicating possible settlement. The Complainant did not request suspension of the proceedings. Accordingly, on January 15, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Nicholas Smith as the sole panelist in this matter on January 28, 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 a United States company founded in 1936 that offers a variety of insurance services including automobile, homeowner, and travel insurance. Each of these insurance services is offered under a mark consisting of the coined word (an abbreviation of the Complainant’s business name) “geico” (the “GEICO Mark”). The Complainant presently has 40,000 employees, insures more than 28 million vehicles and has issued over 17 million other insurance policies. The Complainant has held a trademark registration for the GEICO mark in the United States since 1964, being trademark registration number 763,274 registered on January 14, 1964 for various insurance services in class 36 and listing a date of first use in commerce of 1948. The Domain Name was registered on November 12, 2020 and does not resolve to an active and accessible website. Rather it resolves to an index webpage, containing a file named “cgi-bin.” 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s GEICO Mark; The Complainant is the owner of the GEICO Mark, having registered the GEICO Mark in the United States. The Domain Name is confusingly similar to the GEICO Mark, wholly incorporating the GEICO Mark and adding the descriptive word “corporations”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the GEICO Mark nor is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Indeed the Domain Name does not resolve to an active webpage at all, only an inactive index site. The Respondent has registered and uses the Domain Name in bad faith. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name, which combines the GEICO Mark and the word “corporations”, other than in bad faith. Given the reputation of the highly distinctive GEICO Mark, the Respondent must have been aware of the mark at the time of registration. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On January 7, 2020 the Respondent sent an email to the Center, the relevant portion being: “I can delete this domains from the system but can you please to change to other domain for me as I paid full of this.” Later on the same day the Respondent sent a follow up email to the Center, the relevant portion being: “Please fix these as soon as possible for our site not issue for this domain BUT why the website approved me for registered if they Know Have people taken as you know I pay this full. I can delated the domain any time if the OnlyDomains Limited respond for refund this.” 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the GEICO Mark, having a registration for the GEICO Mark as a trademark in the United States. The Domain Name incorporates the GEICO Mark in its entirety with the addition of the dictionary term “corporations”. The addition of a dictionary term to a complainant’s mark is insufficient to dispel the confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s GEICO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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 or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GEICO Mark or a mark similar to the GEICO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond substantively to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (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; or (iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Panel finds that the Respondent must have been aware of the Complainant and its reputation in the GEICO Mark at the time the Respondent registered the Domain Name. The GEICO Mark is a coined, unique word with no descriptive meaning that has been in use for over 70 years. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the GEICO Mark and the word “corporations” unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the GEICO Mark. An Internet user viewing the Domain Name may be confused into thinking that the Domain Name refers to a website in some way connected to the Complainant. The registration of the Domain Name in awareness of the GEICO Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name and the failure by the Respondent to provide a substantive explanation of its conduct in registering a domain name that combines the GEICO Mark and the word “corporations”, that the Domain Name is most likely being held pending use as website (or email address) that, without the license of the Complainant, will offer or make reference to the Complainant’s services, or services that purport to compete with the Complainant’s insurance services. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding of use in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name 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 Domain Name Nicholas Smith
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: February 11, 2021
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