The Complainant is Government Employees Insurance Company, United States of America (“United States of America” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is lin yanxiao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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 April 15, 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 April 21, 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 April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed Torsten Bettinger as the sole panelist in this matter on May 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 a well-known insurance company that has provided insurance services since 1936 and has been trading under the trademark GEICO for nearly 80 years. The Complainant owns several registrations of trademarks composed in whole or in part of the term GEICO, inter alia, United States registration No. 763,274, registered on January 14, 1964, and No. 2,601,179, registered on July 30, 2002, for the word GEICO registered for services in class 36 (the “GEICO Mark”). The Complainant provided evidence that the disputed domain name resolves to a website that shows a security warning and appears to disseminate malicious malware. The disputed domain name was registered on March 14, 2021. 5. Parties’ Contention A. Complainant The Complainant asserts that through extensive use and promotional activities using the GEICO Mark, it has become uniquely associated with the Complainant and its insurance services. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that as the domain name reproduces the Complainant’s GEICO Mark in its entirety and its use is intended to impersonate the Complainant, and intercept and confuse consumers, and that therefore the disputed domain names should be found to be identical or confusingly similar to Complainant’s registered mark regardless of the additional terms in the disputed domain name. With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that: - the Respondent has no connection or affiliation with the 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; - the Respondent has never been known by the disputed domain name; - the Respondent’s misappropriation of the GEICO Mark in the disputed domain name was no accident and that when a mark is famous, as in the instant case, the use of a domain name for illegal activity, including distributing malware, can never confer rights or legitimate interests on a respondent. Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that: - 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 disputed domain name; - 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 Respondent must have expected that any use of the disputed domain name would cause harm to Complainant; - the Respondent’s illicit registration and use of the disputed domain name long after the registration of Complainant’s trademark rights is evidence of bad faith registration and use of the disputed domain name; and - the Respondent’s use of the disputed domain name to revert, through redirection, to a website that appears to distribute malicious malware constitutes bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns multiple trademark registrations for the GEICO Mark in the United States prior to the registration of the disputed domain name on March 14, 2021. It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case, the disputed domain name only differs from the Complainant’s trademark GEICO by the addition of the term “insuranceonline” which is a descriptive term referring to the services provided by the Complainant. The addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0). Furthermore, it is well accepted under the UDRP that the specific generic Top-Level Domain (“gTLD”), such as “.com”, “.net”, “.org”, is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview 3.0). For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s GEICO trademarks in which the Complainant has exclusive rights. B. Rights or Legitimate Interests Pursuant to Paragraph 4 (c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements: “(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] are making a 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 Complainant has asserted and presented evidence that the disputed domain name redirects Internet users to a website that appears to serve up malicious malware attacks on unsuspecting Internet users and that it has not authorized the Respondent to register or use the disputed domain name. These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its GEICO Mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to resolve to a website that shows a security warning and appears to execute malicious malware attacks. In light of the circumstances of this case, including the level of reputation the Complainant has acquired in its GEICO Mark in connection with insurance services, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name as set forth by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: i. circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration 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 documented out-of-pocket costs directly related to the disputed domain name; or ii. the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. by using the disputed 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 Complainant holds multiple trademark registrations for the GEICO Mark in the United States that predate the registration of the disputed domain name. Given that Complainant has used GEICO as a trademark and company name in connection with insurance services for many years and that the domain name contains the descriptive term “insuranceonline” it is inconceivable that the Respondent coincidentally registered the disputed domain name without any knowledge of the Complainant and its GEICO Mark. The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith. Based on the record in this proceeding it is also undisputed that the disputed domain name redirects Internet users to a website that shows a security warning and appears to execute malicious malware attacks. Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users in order to execute malicious malware indicates bad faith. See section 3.4 of the WIPO Overview 3.0. The Panel therefore concludes that the Respondent’s registration and use is a clear-cut case of cybersquatting and that the Complainant has also satisfied their burden 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 disputed domain name Torsten Bettinger
Sole Panelist
Date: June 7, 2021
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