The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Cibinong Grup HORE, Hore Grup, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 27, 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 According to the Complaint, the Complainant has been providing insurance services since 1936. The types of insurance it offers include automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. It makes a point of saying it is one of the fastest growing automobile insurers in the United States. It has over 40,000 employees and currently has issued over 17 million policies and insures more than 28 million vehicles. It also promotes its services from a website at “www.geico.com”. It has two registered trademarks for GEICO in respect of insurance services in International Class 36: (a) United States Registered Trademark No. 763,274, which was registered on January 14, 1964; and (b) United States Registered Trademark No. 2,601,179, which was registered on July 30, 2002. Both are registered in the Principal Register. Both claim first use in commerce in the United States in 1948. According to the Registrar, the disputed domain name was registered on May 19, 2021. At the time the Complaint was submitted, the disputed domain name resolved to a website which appeared to offer a sports streaming service under the name “Sports Live”. 5. Discussion and Findings No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. Under the Rules, paragraph 11, the language of the proceeding is the language of the Registration Agreement unless otherwise agreed between the parties or provided in the Registration Agreement. However, the Panel does have a discretion to determine otherwise having regard to all the circumstances of the case. In exercising that discretion, the Panel must exercise its powers in accordance with the Rules paragraph 10 including, in particular, ensure that the parties are treated equally and given a fair opportunity to present their respective cases. In the present case, the Registration Agreement is in English as is the website to which the disputed domain name resolves. In these circumstances, there is no basis to depart from the default rule. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the trademark GEICO. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top‑Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.site” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “-network”. The hyphen is a common technique to link two words together and, in any event, such punctuation marks are insubstantial and do not affect the comparison. See, e.g., Telstra Corporation Limited v Ozurls,WIPO Case No. D2001-0046.As this requirement under the Policy is essentially a standing requirement, the addition of such descriptive term does not preclude a finding of confusing similarity. See, e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name and is clearly the distinctive component of the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (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. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See, e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. So far as the Panel is aware, “geico” is an invented word. The Google Translate function does not translate it from Indonesian into an English word. Its only significance appears to be as the Complainant’s name and trademark. The Panel is also conscious that the Respondent’s website is in English and is accessible from around the world including, in particular, the United States. In these circumstances, the use of a domain name which is confusingly similar to the Complainant’s name and trademark appears, as the Complainant contends, to be intended to divert people looking for the Complainant to the Respondent’s website. As there is no connection between the Respondent and the Complainant that unauthorised use of the disputed domain name does not qualify as an offering of goods or services in good faith under the Policy. Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known and invented trademark with a descriptive term, carries a risk of implied affiliation. See, e.g., WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the Complainant has established the required prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has not sought to rebut that prima facie case or advance any claimed entitlement, the Panel therefore finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint. See, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. Given the short time between registration of the disputed domain name and its use in this fashion, it may be inferred that the Respondent registered it for the purpose to which it has been used. As the term “geico” is an invented or coined term and not descriptive, it appears that the Respondent has adopted the disputed domain name because of its trademark significance and then used it, as discussed in section 5B above, in an attempt to divert people looking for the Complainant’s services to the Respondent’s website. The fact that the services being offered are so different and the likelihood that many, if not most, people arriving at the site may not take up the Respondent’s services is irrelevant in this context. The Respondent appears to have sought to use the Complainant’s trademark without permission to attract customers to his website which would not otherwise have ventured there. In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainant has established all three requirements under 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 Warwick A. Rothnie
Sole Panelist
Date: September 10, 2021
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