The Complainant is Government Employees Insurance Company, United States of America (“United States” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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 May 11, 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 amended Complaint on May 14, 2021. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2021. The Center appointed Yuji Yamaguchi as the sole panelist in this matter on June 16, 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 has been trading under the trademark GEICO (the “GEICO Mark”) for nearly 80 years and owns the registrations with the United States Patent and Trademark Office (“USPTO”), including Registration No. 763,274 for GEICO registered on January 14, 1964, and Registration No. 2,601,179 for GEICO registered on July 30, 2002. The Complainant has established a website located at “www.geico.com”, which promotes and sells its insurance services. The disputed domain name was registered on April 12, 2021. The disputed domain name resolves to a website containing “pay-per-click” links to third-party websites featuring insurance services. The WhoIs page for the disputed domain name indicates that it has been 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. 5. Parties’ Contentions A. Complainant First, the Complainant contends that the disputed domain name incorporates the distinctive GEICO Mark and is identical or confusingly similar to the GEICO Mark regardless of the additional term in the disputed domain name, and the use of the disputed domain name is intended to impersonate the Complainant, and intercept and confuse consumers when looking for bona fide and well-known Geico products and services or authorized partners. Second, the Complainant asserts that the Respondent has no connection or affiliation with the Complainant, 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 has never been known by the disputed domain name. Then, the Complainant asserts that the Respondent could have no rights or legitimate interests in the disputed domain name since it is not a name that the Respondent would have legitimately and randomly chosen to use. Third, 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, and the Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The Complainant also argues that 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 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 disputed domain name incorporates the Complainant’s famous GEICO Mark plus the letters “ww” thereby creating a presumption of bad faith. The Complainant additionally asserts that the fact that disputed domain name resolves to a website containing apparent pay-per-click hyperlinks to third-party websites featuring services provided by the Complainant’s competitors is also patent evidence of bad faith, and the fact the disputed domain name is advertised for sale far in excess of any out-of-pocket expenses directly related to the disputed domain name strongly suggests that the Respondent was aware of the Complainant’s trademark and its business when it registered the disputed domain name and that the Respondent’s intention in registering the disputed domain name was for financial gain. The Complainant further asserts that the Respondent’s lack of response to the Complainant’s demand letter, and continuation of its bad faith use of the disputed domain name despite receiving the demand letter further evidences the Respondent’s bad faith registration and use of the disputed domain name. Finally, The Complainant affirms that the Respondent is a serial cybersquatter who has been implicated in hundreds of UDRP decisions for the same conduct of typosquatting. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must assert and prove the following three elements are present: (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 owns the US trademark registrations of the GEICO Mark, and the GEICO Mark becomes well known through its extensive use and promotion. The disputed domain name incorporates the GEICO Mark in its entirety with the addition of two letters “ww” and a generic Top-Level Domain (“gTLD”) “.com”. The letters “ww” might be used as an abbreviation for a word such as “worldwide”. As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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 in paragraph 4(a) of the Policy. The gTLD “.com” may be disregarded for the purpose of assessment of confusing similarity under the first element. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GEICO Mark. B. Rights or Legitimate Interests The Complainant asserted that the Respondent has no connection or affiliation with the Complainant; 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 has never been known by the disputed domain name. The disputed domain name resolves to a website containing pparent pay-per-click links to third-party websites featuring insurance services. Such pay-per-click links compete with or capitalize on the reputation and goodwill of the Complainant’s GEICO Mark or otherwise mislead Internet users, and hence the disputed domain name is not used by the Respondent in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. See section 2.9 of the WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has made 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. See section 2.1 of the WIPO Overview 3.0. The Respondent failed to submit a Response in this proceeding as well as did not reply to the Complainant’s email demanding transfer of the disputed domain name just before the filing of this Complaint. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The GEICO Mark is the distinctive and well-known acronym for the Complainant’s name. The Respondent must have known the GEICO Mark at the time of the registration and use of the disputed domain name because the Respondent has already been involved in the following numerous previous UDRP proceedings against the Complainant: - Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-0326 ( - Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3280 ( All the domain names in these proceedings incorporate the GEICO Mark in its entirety. These decisions clearly show that the Respondent has engaged in a pattern of abusive conduct. The disputed domain name is available for purchase on the “www.sedo.com” website for a minimum bid of Lastly, the Respondent cannot disclaim its responsibility for the pay-per-click links appearing on the website associated with the disputed domain name. See section 3.5 of the WIPO Overview 3.0. The apparent pay-per-click links to third-party websites featuring insurance services support a finding of bad faith. Consequently, the Panel finds that the requirement of registration and use in bad faith 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 Yuji Yamaguchi
- Government Employees Insurance Company (“GEICO”) v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Carolina Rodrigues,WIPO Case No. D2020-3253 (
- Government Employees Insurance Company (“GEICO”) v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-2869 (<0geico.com>);
- Government Employees Insurance Company (“GEICO”) v. Carolina Rodrigues,WIPO Case No. D2020-2499 (
- Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1723 (
- Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1425 (
- Government Employees Insurance Company (“GEICO”) v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1012 (
- Government Employees Insurance Company (“GEICO”) v. Registration Private, Domain By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0764 (
USD 899, which appears to exceed out-of-pocket costs directly related to the disputed domain name.
Sole Panelist
Date: June 30, 2021
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