The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “U.S.”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Adminstrator, Fundacion Privacy Services LTD, Panama. 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 9, 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 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 19, 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, Government Employees Insurance Company (abbreviated “GEICO”), is an American insurance company that has provided insurance services since 1936, and most notably car insurance. The Complainant has over 17 million policies in force and insures more than 28 million vehicles. The Complainant also has over 40,000 employees, and is one of the fastest-growing auto insurers in the U.S. The Complainant owns several trademarks for the sign GEICO, including the following: - GEICO, United States word mark registered with the United States Patent and Trademark Office (“USPTO”) on January 14, 1964, under number 763,274 in class 36; and, - GEICO, United States word mark registered with the USPTO on July 30, 2002, under number 2,601,179 in class 36. The Complainant offers its insurance services through its website linked to the domain name The Disputed Domain Names were registered on the following dates: - - - The Disputed Domain Names currently resolve to websites containing pay-per-click (“PPC”) links to third-party websites, including to websites of competitors of the Complainant. The Disputed Domain Names are also offered for sale on a third-party website for the following minimum bids: - The Complainant considers the Disputed Domain Names to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondent has not used the Disputed Domain Names in connection with a legitimate use. Also, according to the Complainant, the Respondent is not commonly known by the Disputed Domain Names and is in no way affiliated with or authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Names were registered and are being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights and is using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: i. the Disputed Domain Names are 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 Names; and iii. the Disputed Domain Names have been registered and are being used in bad faith. The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s GEICO trademarks have been registered and used in connection to the Complainant’s insurance services. All of the Disputed Domain Names incorporate the Complainant’s GEICO trademark. The Disputed Domain Names The Disputed Domain Name Additionally, it is well established that generic Top-Level Domains (“gTLDs”), here “.com” and “.net”, may be disregarded when considering whether a disputed domain name is confusingly similar to a trademark in which a complainant has rights. In light of the above, the Panel considers the Disputed Domain Names to be confusingly similar to the Complainant’s GEICO trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent does not appear to be commonly known by the Disputed Domain Names and that the Respondent does not seem to have acquired trademark or service mark rights (there being no Response or evidence of any such rights). The Respondent’s use and registration of the Disputed Domain Names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). In the present case, the Panel finds that the Disputed Domain Names carry a risk of implied affiliation with the Complainant and cannot constitute fair use: - - - Beyond looking at the domain names and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain names and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). In this case, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. It appears that the Disputed Domain Names refer to parking pages containing PPC links. According to the evidence provided by the Complainant, some of these links relate to the Complainant’s insurance business. The Panel finds that such sponsored links may capitalize on the reputation and goodwill of the Complainant’s mark or mislead Internet users, which cannot be considered as a fair use of the Disputed Domain Names (see section 2.9 of the WIPO Overview 3.0). The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that these are used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location. In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Names. As explained under section B above, all three Disputed Domain Names include the Complainant’s distinctive GEICO trademark in its entirety or an obvious misspelling thereof. Moreover, two of the three Disputed Domain Names are identical or almost identical to domain names used by the Complainant or affiliated organisations, which further suggests that the Respondent knew of the Complainant and its rights. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). The Panel observes that the Disputed Domain Names refer to parking pages containing PPC links, some of which relate to the Complainant’s insurance business. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of the Disputed Domain Names, which are confusingly similar to the Complainant’s trademark, to obtain click-through-revenue constitutes bad faith use in the circumstances of this case (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). The fact that the PPC links may be automatically generated by a third party cannot discharge the Respondent of any responsibility for the content appearing on the websites connected to the Disputed Domain Names under its control (see section 3.5 of the WIPO Overview 3.0). In any event, the specific combinations of the GEICO mark (or a misspelling therof) with a misspelling of a third-party trademark, or with descriptive terms referring to websites used by the Complainant or affiliated organisations, make it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by the Respondent. Moreover, according to the Panel, the fact the Disputed Domain Names are advertised for a minimum sale value of USD 500 and USD 899, in excess of reasonable out-of-pocket expenses directly related to the Disputed Domain Names, is a further indication of bad faith in the circumstances of this case. By hiding behind a privacy/proxy service, the Respondent also took active steps to conceal his identity. In combination with the above, this supports a finding of bad faith registration and use of the Disputed Domain Names (see section 3.6 of the WIPO Overview 3.0). Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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, Flip Jan Claude Petillion
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Sole Panelist
Date: January 27, 2021
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