The Complainant is Government Employees Insurance Company (“GEICO”), United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is 林彦晓 (Yan Xiao Lin), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint regarding the disputed domain name
On July 3, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding for the disputed domain name
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 in English and Chinese of the Complaint regarding the disputed domain name
In the meantime, on July 16 and 21, 2021, the Complainant submitted a new Complaint regarding the disputed domain name
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 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.
On September 16, 2021, in accordance with paragraphs 10 and 12 of the Rules, the Panel issued Administrative Panel Procedural Order No. 1, in which it invited the Respondent to provide comments by September 21, 2021 on the Complainant’s request to add a domain name to the current proceeding. In the same Order, the Panel informed the Parties that (i) the Respondent could request by September 21, 2021 additional time in which to file a Response; (ii) the Complainant could comment by September 24, 2021 on any submissions from the Respondent; and (iii) after that date, the Panel would proceed to render a decision or issue further procedural orders, as appropriate. No further communication was received from either Party.
On October 6, 2021, the Panel instructed the Center to inform the Parties and Registrar that the Panel had decided to consolidate the two proceedings, i.e., allowing the addition of the disputed domain name
The Complainant is an insurance company. It holds the following United States of America trademark registrations, both for GEICO:
- No. 763,274, registered on January 14, 1964, with a claim of first use in commerce in 1948, specifying insurance underwriting and other services in classes 35 and 36; and
- No. 2,601,179, registered on July 30, 2002, with a claim of first use in commerce on December 31, 1948, specifying insurance brokerage and other services in class 36.
The above trademark registrations are both current. The Complainant has also registered the domain name
The Respondent is an individual resident in China.
The disputed domain names
The disputed domain names are identical or confusingly similar to the Complainant’s GEICO mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. 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 names. Use of the disputed domain names to generate pay-per-click revenue is not use in connection with a bona fide offering of goods and services and thus, is not a legitimate interest.
The disputed domain names were registered and are 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 disputed domain names. The disputed domain names resolve to websites containing apparent PPC hyperlinks to third-party websites featuring services provided by the Complainant’s competitors.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Procedural Issues A. Addition of a Domain NameAfter the commencement of this proceeding and prior to the due date for submission of the Response, the Complainant requested the addition of the disputed domain name
Paragraph 10(e) of the Rules provides that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” The Panel observes that (a) the additional disputed domain name was registered on July 3, 2021, after the Complaint was filed and on the day that the Center sent an email communication to the Parties regarding the language of the proceeding; (b) the additional domain name, and the website to which it resolves, concern the same trademark rights and raise the same factual issues as the original disputed domain name and the website to which it resolves; (c) the registrant of the additional disputed domain name is the registrant of the original disputed domain name; and (d) the Respondent was given a reasonable opportunity to respond to the Complainant’s submission regarding the additional disputed domain name without unduly delaying the proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.2.
Therefore, the Panel decides to add the disputed domain name
Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the content on the webpages provided under the disputed domain names is exclusively in English which supports an inference that the Respondent is able to understand English and favors a determination that the proceeding should be conducted in English whereas requiring the Complainant to translate the Complaint would lead to potential unfairness and unwarranted delay.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The disputed domain names resolve to landing pages in English, from which it is reasonable to infer that the Respondent understands that language. Further, despite the Center having sent the Parties an email communication regarding the language of the proceeding, written notification of the Complaint, and Administrative Panel Procedural Order No. 1, each one in both Chinese and English, the Respondent has not replied or expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:
(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 SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the GEICO mark.
The disputed domain names wholly incorporate the GEICO mark. They also include the letter “r” or the word “my”. Given that the mark remains clearly recognizable within the disputed domain names, the Panel does not consider that the addition of this letter or this word avoids a finding of confusing similarity. See WIPO Overview 3.0”, section 1.8.
The disputed domain names also include a Top-Level Domain (“TLD”) suffix (either “.com” or “.co”). As a mere technical requirement of domain name registration, a TLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain names resolve to landing pages that display PPC links to websites offering insurance quotes and insurance services. The Complainant submits 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. This evidence indicates that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Given that the PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of those linked websites, or both, this is not a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy either.
As regards the second circumstance, the Respondent is identified in the Registrar’s WhoIs database as “林彦晓 (Yan Xiao Lin)”, not either of the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location.”
The disputed domain names were registered in 2021, years after the Complainant obtained its trademark registration for GEICO. The disputed domain names both wholly incorporate the GEICO mark, which is not a dictionary word, to which they add another letter or word. The disputed domain names both resolve to landing pages displaying PPC links to websites offering insurance quotes and insurance services, which indicates an awareness of the nature of the Complainant’s services. These circumstances indicate that the Respondent knew of the Complainant and its GEICO trademark at the time that he registered the disputed domain names and that he targeted that mark.
The Respondent uses the disputed domain names in connection with landing pages displaying PPC links to insurance websites, including websites of the Complainant’s competitors. The PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of those linked websites, or both. In view of these circumstances, the Panel considers that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s GEICO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Matthew Kennedy
Sole Panelist
Date: October 6, 2021
1 As regards the addition of the disputed domain name