Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name is The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 those in the Complaint. The Center sent an email communication to Complainant on April 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 20, 2021.1 The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 30, 2021. The Center appointed Gerardo Saavedra as the sole panelist in this matter on June 7, 2021. This Panel finds that it was properly constituted. This 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 Complainant is an insurance company. Complainant has rights over the GEICO mark for which it holds registration No. 763274 registered on January 14, 1964, in classes 35 and 36, and registration No. 2601179 registered on July 30, 2002, in class 36, with the United States Patent and Trademark Office (“USPTO”), and with stated first use in 1948. The disputed domain name was registered on February 5, 2021. At the time the Complaint was filed, the disputed domain name redirected visitors to other websites, such as “www.bestphotographie.com” and “www.wix.com”. 5. Parties’ Contentions A. Complainant Complainant’s assertions may be summarized as follows. Complainant is a well-known insurance company that has provided insurance services since 1936, and that offers numerous types of insurance services (including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others). With over 40,000 employees, Complainant has over 17 million policies and insures more than 28 million vehicles, and is one of the fastest-growing auto insurers in the United States. Complainant has been trading under the GEICO mark for nearly 80 years and owns exclusive rights in such mark as evidenced by its numerous federally registered trademarks and service marks that wholly incorporate the GEICO mark or iconic visual representations thereof. Complainant has made extensive use of its distinctive GEICO mark in connection with its services. Complainant claims to have invested large sums to promote and develop the GEICO mark through television, print media and the Internet. As a result of such efforts, the GEICO mark is a powerful, recognizable symbol of Complainant’s goodwill and excellent reputation, and it has become uniquely associated with Complainant and its services. Further, Complainant has established a website located at “www.geico.com”, which Complainant uses to promote and sell its insurance services. The disputed domain name consists entirely of the GEICO mark adding only the descriptive term “go”. The disputed domain name is identical or confusingly similar to the GEICO mark regardless of the additional term in it. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with 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, and Complainant believes that Respondent has never been known by the disputed domain name. The disputed domain name currently redirects to a number of rotating third-party websites that are not affiliated with Complainant. The use of the disputed domain name to redirect to third-party websites is not a legitimate interest. Respondent’s misappropriation of the GEICO mark in the disputed domain name was no accident. Respondent is using and has used the disputed domain name to intentionally attempt to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to Respondent’s own webpages by creating a likelihood of confusion or association with Complainant, all for commercial gain. Respondent could have no legitimate interest in the disputed domain name since it is not a name that Respondent would have legitimately and randomly chosen to use. Respondent is a prolific cybersquatter, which suggests that Respondent has no legitimate interest in the domain names it registers.2 The disputed domain name was registered and is being used in bad faith. Due to the well-known and distinctive character and reputation of GEICO, Respondent must have been aware of Complainant and its GEICO mark when registering the disputed domain name. Complainant’s rights in the GEICO mark would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online. Respondent is thus deemed to have constructive notice of Complainant’s mark rights. Respondent’s use of GEICO to attract Internet users to Respondent’s website, knowing that Complainant had not authorized it to do so is evidence of bad faith. Respondent must have expected that any use of the disputed domain name would cause harm to Complainant. Respondent’s use of the disputed domain name supports a finding of bad faith and there is no conceivable contemplated use of the disputed domain name that would not be an infringing use by Respondent. Respondent’s use of the GEICO mark is tantamount to bad faith. The disputed domain name is used to redirect users to various third-party websites, including unrelated websites that feature services that are in fields unrelated to those of Complainant. In doing so, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or products or services on its website or location. That unauthorized use of the disputed domain name by Respondent severely harms Complainant by tarnishing and infringing its marks, reputation, and goodwill. The WhoIs page for the disputed domain name indicates that Respondent has listed it for sale by including hyperlinks in the top promotional banner directing users to “Visit our partner to buy” the disputed domain name. The website to which the “Visit our partner to buy” hyperlink resolves indicates that the disputed domain name is available for purchase for a minimum bid of USD 899. The fact the disputed domain name is advertised for said minimum sale value, far in excess of any out-of-pocket expenses directly related to the disputed domain name, strongly suggests that Respondent was aware of Complainant’s mark and its business when it registered the disputed domain name and that Respondent’s intention in registering the disputed domain name was for financial gain, all in bad faith. Complainant’s counsel contacted Respondent to request that Respondent ceased its infringing use of the GEICO mark and transferred the disputed domain name to Complainant. 3 Respondent has not responded to said Complainant’s demand. Respondent’s lack of response and continuation of its bad faith use of the disputed domain name despite receiving the demand letter further evidences Respondent’s bad faith registration and use of the disputed domain name. Respondent is a serial cybersquatter who has been implicated in hundreds of UDRP cases, which previous UDRP panels have found to be evidence that Respondent is in the business of registering domain names that include the marks of others, all in bad faith. Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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 It is undisputed that Complainant has rights over the GEICO mark. Since the addition of a generic Top-Level Domain (i.e. “.com”) in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the GEICO mark, albeit preceded by the characters “go”. It is clear to the Panel that the GEICO mark is recognizable in the disputed domain name and that the addition of such characters in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0). Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that it has no connection with Respondent, that it has not authorized Respondent to use the GEICO mark in a domain name or otherwise, and that the disputed domain name will result in its association with Complainant and its mark. The evidence in the file shows that the disputed domain name redirects Internet users to other websites. The evidence also shows that Complainant uses the website linked to the domain name This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.4 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent did not rebut. Taking into consideration that Complainant’s registration and use of its GEICO mark preceded the registration of the disputed domain name by a significant number of years, and that Complainant’s business is featured at “www.geico.com”, this Panel is of the view that Respondent should have been aware of the existence of Complainant’s mark at the time it obtained the registration of the disputed domain name. Further, in the case at hand, Respondent’s bad faith may be deduced from the following facts: (i) Respondent is using Complainant’s mark in the disputed domain name (albeit with the addition of irrelevant characters) without Complainant’s authorization; (ii) several prior UDRP decisions against Respondent for having registered as domain names marks of third parties;5 (iii) the risk of implied affiliation of the disputed domain name with Complainant’s mark; (iv) Respondent’s intent to sell (through a third party) the disputed domain name for a price in excess of its registration cost;6 and (v) Respondent’s failure to appear at this proceeding. In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s mark, which denotes bad faith. In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name Gerardo Saavedra 1 The original Complaint was filed against a privacy service “Registration Private, Domains By Proxy, LLC”, which appeared as registrant in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar. 2 The Complaint refers to O2 Worldwide Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0082, and Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3107, and cases cited therein. 3 Annex G of the Complaint is an email communication Complainant sent on February 12, 2021, to the email address as appeared in the corresponding WhoIs report of the disputed domain name. 4 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”. See also section 2.1 of the WIPO Overview 3.0. 5 See Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3107: “Respondent is a serial offender [...] There are over 140 cases filed through the Center – found via a simple search on its public website – involving the Respondent, ranging from 2012 to the present. The Panel agrees that the Respondent is clearly in the business of registering domain names that include the trademarks of others. Following this pattern, the Respondent has registered the Disputed Domain Name using the Complainant’s DISCOVER trademark in order to trade off the Complainant’s reputation (and by so doing, preventing Complainant from registering the Disputed Domain Name). This alone constitutes evidence of registration and use in bad faith”. See also Budget Rent a Car Corporation v. Cupcake City,WIPO Case No. D2000-1020: “Respondent is the typical cyber squatter that the ICANN rules were designed to protect trademark holders against”. 6 See Esteban Ceca Magán v. John Gray,WIPO Case No. D2011-1202: “Respondent’s attempt to sell (through the Registrar) the disputed domain name for an amount well in excess of its registration cost is also indicative of bad faith registration and use”. See also Prisma Presse v. BUYDOMAINS.COM,WIPO Case No. D2001-1073.
Sole Panelist
Date: June 21, 2021
Full & Egal Universal Law Academy