The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Omar Hudson, United States. 2. The Domain Name and Registrar
The disputed domain name <5ggeico.com> is registered with 1&1 IONOS SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2021, 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 March 5, 2021 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 March 5, 2021.
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 March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2021.
The Center appointed Anne Gundelfinger as the sole panelist in this matter on April 21, 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 Government Employees Insurance Company, widely known under the trade name “GEICO”, and is among the largest providers in the United States of auto and other insurance services including motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. Founded in 1936, the Complainant has traded under the name and mark GEICO (the “Mark”) for nearly 80 years, has over 40,000 employees, and is one of the fastest-growing auto insurers in the U.S. It has over 17 million insurance policies, insures more than 28 million vehicles, and has revenue exceeding USD 35 billion.
The Complainant owns multiple trademark registrations in the United States for the GEICO and GEICO-based marks (“GEICO Mark” or “Complainant’s Mark”), including the following:
- U.S. Trademark Registration No. 763,274, issued January 14, 1964 for GEICO in International Class 36 for insurance services; and
- U.S. Trademark Registration No. 2,601,179, issued July 30, 2020 for GEICO in International Class 36 for insurance services.
The Complainant also owns the domain name The disputed domain name was registered on January 10, 2020 and resolves to a parking page that displays apparent pay-per-click sponsored links relating to various insurance services and companies, including competitors of the Complainant. At the time of initiation of this proceeding, the Respondent’s website also included a link to a webpage at the domain name marketplace at “www.sedo.com” offering the disputed domain name for sale for USD 99. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its well-known GEICO Mark because the disputed domain name wholly incorporates the Mark along with the additional characters “5g”. The Complainant further contends, and has presented substantial evidence in support, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainant asserts inter alia that (a) the Complainant’s Mark is well known in the United States, such that the Respondent must have known of and targeted the Complainant’s Mark in registering the disputed domain name, (b) the Complainant has given no authorization or license for use of the disputed domain name, (c) the Respondent is not commonly known by the disputed domain name, (d) the Respondent’s use of the disputed domain name for a parking page containing insurance-related links and its offer to sell the disputed domain name both fail to establish rights or legitimate interests and also demonstrate the Respondent’s bad faith registration and use, and (e) the Respondent’s use of the disputed domain name is misleading and creates a likelihood of confusion. The Complainant sent an email to the Respondent on January 29, 2021 asserting its trademark rights in the GEICO Mark and demanding that the disputed domain name be transferred to the Complainant. According to Complainant’s submission, no response was received from Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (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 disputed domain name wholly incorporates the Complainant’s well-known GEICO Mark along with the number “5” and an extra letter “g”. It is well-established that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287; and Accor v. WhoisGuard, Inc. / Bill Bro,WIPO Case No. D2018-2329 (ordering transfer and finding the addition of the suffix of “5g” to the trademarks in the domain names is insufficient to avoid a finding of confusing similarity). Similarly, the addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusing similar to the Complainant’s Mark, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden-shifting is appropriate given that the respondent is often the only party with access to evidence of its own rights or legitimate interests. Accordingly, where a respondent fails to file a response, a UDRP panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, the Complainant has asserted that it has no connection or affiliation with the Respondent and has given no authorization for the Respondent’s use of the disputed domain name. The Complainant has submitted evidence that the Respondent is using the disputed domain name for a parking page featuring apparent pay-per-click insurance-related links. The Panel has confirmed that the Respondent’s webpage includes links relating not only to products and services of the Complainant’s competitors, but also links that purport to offer quotes for the Complainant’s “Geico Insurance” but instead lead to offers from the Complainant’s competitors. It is the consensus view that such a pay-per-click use is neither a fair use nor a bona fide offering of goods or services under the Policy and therefore does not establish rights or legitimate interests. See e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302. See also, section 2.9 of the WIPO Overview 3.0 and cases cited therein. Moreover, in this case, the Respondent’s pay-per-click links are affirmatively misleading, using the Complainant’s GEICO Mark in the content of the webpage to link users to quotes from providers other than the Complainant. Such a deceptive use of a complainant’s mark does not form the basis for a finding of legitimate interest. See, section 2.13 of the WIPO Overview 3.0 and cases cited therein. In the absence of countervailing evidence from the Respondent the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the test is satisfied. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. The Complainant’s GEICO Mark has been long-used and is well-known in the United States, as has been recognized by many UDRP Panels. See e.g., Government Employees Insurance Company (“GEICO”) v. Jun Yin, WIPO Case No. DCO2020-0037. As previously concluded, the disputed domain name is confusingly similar to the Complainant’s well-known GEICO Mark. Moreover, given the distinctive nature of the GEICO Mark, given how well-known the Mark is in the United States, and given the Respondent’s use of the GEICO Mark in links in the content of the Respondent’s parking page, there can be no doubt that the Respondent knew of and was targeting the Complainant’s Mark, and doing so for commercial gain. The Respondent both offered to sell the domain name for a profit and hosted misleading pay-per-click insurance-related links on the site. Either action alone would suffice in the overall circumstances of this case to establish bad faith registration and use – here we have both. See, paragraphs 4(b)(i) and 4(b)(iv) of the UDRP; sections 3.1, 3.1.1, 3.1.4, and 3.5 of the WIPO Overview 3.0; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is satisfied. 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 <5ggeico.com> be transferred to the Complainant. Anne Gundelfinger
Sole Panelist
Date: April 28, 2021
Full & Egal Universal Law Academy