The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2021, 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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2021. The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 29, 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 company that has provided insurance services since 1936. The Complainant is the proprietor of, i.a, the following service marks registered with the United States Patent and Trademarks Office (the “USPTO”). - GEICO, Registration No. 763,274, registered on January 14, 1964 The Domain Name was registered on February 22, 2021. The Complainant submits that the Domain Name resolved to a website containing a list of pay-per-click links to unrelated third-party websites. As of the filing of the Complaint, the Domain Name resolved to a website that simply displayed the text “too many requests”. By the time of this decision, the Domain Name was redirecting to different websites. 5. Parties’ Contentions A. Complainant The Complainant alleges the following: The Domain Name is identical or confusingly similar to the Complainant’s GEICO service mark. The Respondent has no right or legitimate interest in the Domain Name. The Respondent has no connection or affiliation with the Complainant nor any license or consent to use the GEICO mark. Further, the Complainant believes that the Respondent has never been known by the Domain Name and that the Respondent previously used the Domain Name to collect click-through advertising revenues from websites to which the Domain Name redirected visitors. The use of the Domain Name to generate pay-per-click revenue is not in connection with a bona fide offering of goods and services and thus is not a legitimate interest. The Domain Name was registered and is being used in bad faith. 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 Domain Name. The Complainant’s rights in the GEICO Mark also would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online. The Respondent’s use of the GEICO Mark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so, is evidence of bad faith. The Domain Name – wholly incorporating the GEICO Mark – is so obviously indicative of being authorized by the Complainant that the Respondent’s use of the Domain Name would inevitably lead to confusion of some sort. The fact that the Domain Name is advertised for a minimum sale value of USD 899, far in excess of any out-of-pocket expenses directly related to the Domain Name, strongly suggests that the Respondent was aware of the Complainant’s GEICO mark and its business when it registered the Domain Name and that the Respondent’s intention in registering the Domain Name was for financial gain, all in bad faith. The previous use of the Domain Name as a gateway website that contained apparent pay-per-click links to unaffiliated third-party websites promoting third-party services is evidence of bad faith. As of the filing of the Complaint, the Domain Name resolved to a website that simply displayed the text “too many requests”. The passive holding of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. After becoming aware of the Domain Name, the Complainant’s counsel contacted the Respondent to request that the Respondent cease its infringing use of the GEICO Mark and transfer the Domain Name to the Complainant. The Respondent’s lack of response to the Complainant’s demand letter, and continuation of its bad faith use of the Domain Name despite receiving the demand letter further evidences the Respondent’s bad faith registration and use of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has clearly established that it is the proprietor of several service mark registrations for GEICO, that were registered several years before the registration of the Domain Name. The Domain Name incorporates GEICO in its entirety while adding “priviledges”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The term “priviledges” in this case seems to be a typographical error of the descriptive term “privileges” and does not prevent a finding of confusing similarity. Further, it is well established that “.com”, as a generic Top-Level Domain suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see paragraph 1.11.1 of the WIPO Overview 3.0). Accordingly, the Panel finds that that the Domain Name is confusingly similar to service marks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden of production, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see paragraph 2.1 of the WIPO Overview 3.0). In the present case, the Respondent failed to submit a Response. Considering all of the evidence presented in this matter and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the Domain Name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent to use the Complainant’s GEICO mark, leads the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith Previous UDRP Panels have found the Complainant’s GEICO mark to be well-known and to have a distinctive character (see Government Employees Insurance Company (“GEICO”) v. Jun Yin, WIPO Case No. DCO2020-0037 and Government Employees Insurance Company (“GEICO”) v. 石磊 (shilei),WIPO Case No. D2020-3331). The Panel sees no reason to make any other assessment in this regard. Considering this and that the Domain Name reproduces the distinctive GEICO mark in its entirety, the Respondent must have been aware of the Complainant and its GEICO mark at the time of registration of the Domain Name. The Complainant has presented evidence showing that the Domain Name has been used to divert Internet users to gateway website that contains links to third party websites promoting third-party services. The Panel finds that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Domain Name website by creating a likelihood of confusion with the Complainant’s mark. The passive holding of the Domain Name by the Respondent before the Complaint was filed does not prevent a finding of bad faith. Based on what has been stated above and the fact that the Domain Name has been advertised for a minimum sale value of USD 899, exceeding any out-of-pocket expenses directly related to the Domain Name and the Respondent’s failure to reply the Complainant’s demand letter, the Panel finds that the Domain Name was registered and is being used in bad faith. 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 Jonas Gulliksson
- GEICO, Registration No. 2,601,179, registered on July 30, 2002
Sole Panelist
Date: May 13, 2021
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