The Complainant is Government Employees Insurance Company, United States of America (“U.S.”), represented by Burns & Levinson LLP, U.S.
The Respondent is 杨智超 (Zhichao Yang), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2021. On April 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 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. On April 30, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 2, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2021. The Center appointed Francine Tan as the sole panelist in this matter on June 13, 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 (also known as “GEICO”), states that it is a well-known insurance company that has been providing insurance services since 1936. The Complainant offers numerous types of insurance services including, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, and overseas insurance. The Complainant has over 40,000 employees and is one of the fastest-growing auto insurers in the U.S. The Complainant has been trading under the GEICO trade mark for nearly 80 years and owns numerous registered trade marks that wholly incorporate the GEICO mark or iconic visual representations thereof. The Complainant owns, inter alia, the following trade mark registrations in the U.S.: (i) U.S. Trade Mark No. 763,274 for GEICO, registered on January 14, 1964; and The Complainant states that it has made extensive use of its GEICO mark in connection with its services and invested large sums of money to promote and develop the GEICO mark through television, print media, and the Internet. To-date, the Complainant manages over 17 million policies and insures more than 28 million vehicles. The Complainant also owns the domain name The disputed domain name was registered on March 17, 2021, and, at the time of the filing of the Complaint, resolves to a website with pay-per-click links to unrelated third-party websites, including to websites of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant 1. The disputed domain name is confusingly similar to the GEICO trade mark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s GEICO mark in its entirety. The GEICO mark is recognizable within the disputed domain name. The addition of the terms “r7”, “tech”, and “fax” does not prevent a finding of confusing similarity to the Complainant’s GEICO mark. 2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or licensed by the Complainant to use the GEICO mark. The Respondent is not known by the disputed domain name. The Respondent’s use of the disputed domain name to redirect to third-party websites through pay-per-click links does not constitute a legitimate interest. 3. The disputed domain name was registered and is being used in bad faith. Due to the fame and distinctive character 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 unauthorized use of the GEICO mark to attract Internet users to its website constitutes bad faith. The Respondent must have anticipated that the use of the disputed domain name would cause harm to the Complainant as it would lead to consumer confusion. The Complainant’s rights in its GEICO mark would have been obvious through basic domain name searches and other searches of the U.S. Patent and Trade Mark Office records that are readily accessible online. The Respondent’s registration and use of the disputed domain name long after the registration of the Complainant’s GEICO trade mark is evidence of bad faith use and registration. The disputed domain name is used for a website which contains pay-pay-click links to third-party websites featuring services provided by competitors of the Complainant. This is also evidence of bad faith. Further, the Respondent has been engaging in a pattern of bad faith conduct as he has been involved in numerous other UDRP proceedings wherein the Respondent was ordered to transfer the domain names in dispute to the respective complainants. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Paragraph 10(c) of the Rules provides that “The Panel shall ensure that the administrative proceeding takes place with due expedition”. The language of the Registration Agreement in relation to the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The reasons are that: (i) the disputed domain name is in the English language; (ii) the website to which the disputed domain name resolves is in the English language; and (iii) the Complainant will be put through unfairness and unwarranted delays if Chinese were made the language of the proceeding. The Panel is persuaded that the Respondent is familiar with the English language in view of the language of the content on the website to which the disputed domain name resolves, and the choice of language of the disputed domain name. The Panel also notes that the Respondent has not responded on the issue of the language of the proceeding, and that all of the Center’s communications with the Parties have been sent in both English and Chinese. In the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to require the Complainant to translate the Complaint and evidence into Chinese and conduct the proceeding in Chinese. Accordingly, the Panel finds it appropriate to make a determination that English apply as the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has established it has rights in the GEICO trade mark. The GEICO trade mark is reproduced in its entirety in the disputed domain name, accompanied by “r7” and the dictionary terms “tech” and “fax”. The Panel finds that confusing similarity with the Complainant’s GEICO mark is not avoided by the addition of these terms. It is well established by many earlier UDRP panel decisions that the addition of meaningless and/or dictionary terms do not serve to remove the confusing similarity with a complainant’s mark which is reproduced in its entirety and identifiable therein. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).) The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s registrations of the GEICO trade marks long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use GEICO as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “r7techfaxgeico”. The Respondent’s use of the disputed domain name in relation to the provision of pay-per-click links to competing third-party websites does not constitute a bona fide offering of goods or services. The Panel is satisfied that the Complainant has established a prima facie case, following which the burden of production shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Complainant’s GEICO trade marks have been in use for a very long time and are well-established. The Panel is persuaded that the Respondent could not as a matter of pure coincidence and without prior knowledge of the Complainant and its mark have selected the disputed domain name without the Complainant and/or its GEICO trade mark in mind. The Complainant cited section 3.1.4 of the WIPO Overview 3.0 which states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. The Panel is inclined to agree that the instant case is an applicable example. It is clear from the manner of use of the disputed domain name by the Respondent, that the Respondent had targeted the Complainant and registered the disputed domain name with the intention to attract, for commercial gain, Internet users to his website or other on-line 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 Panel also finds that there appears to be a “pattern of conduct” on the part of the Respondent, from the many domain name disputes in which he was also a respondent (e.g., Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang,WIPO Case No. D2019-0792; Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang,WIPO Case No. D2017-1322). Paragraph 4(b) of the Policy provides that the following circumstances, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Panel is of the view that the circumstances of this case fall within the scope of in paragraphs 4(b)(ii) and (iv) of the Policy. The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been 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 Francine Tan
(ii) U.S. Trade Mark No. 2,601,179 for GEICO, registered on July 30, 2002.
Sole Panelist
Date: June 17, 2021
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