The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center sent Regarding Notification of Complaint emails to the Respondent on September 16, 2021. The due date of Response was September 21, 2021. The Respondent did not submit any Response.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on October 7, 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.
The Complainant is a US company that provides numerous types of insurance services since 1936. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others.
The Complainant is the owner of the GEICO trademarks, including:
US trademark GEICO, on the international class 36, registration number 0763274, registered since January 14, 1964; and
US trademark GEICO, on the international class 36, registration number 2601179, registered since July 30, 2002.
The Complainant is the owner of
According to the information provided by the Registrar and in the WhoIs database the Disputed Domain Name
At the time of filing of the Complaint, the Disputed Domain Name resolves to various websites including the website distributing malware and the website displaying pay-per-click links. At the time of this Decision, the Disputed Domain Name resolves to a pay-per-click website.
5. Parties’ Contentions A. ComplainantThe Complainant’s submissions may be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant argues that the Disputed Domain Name is confusingly similar to its GEICO trademark. The Disputed Domain Name incorporates the GEICO trademark in its entirety. The addition of the “v” does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Also, the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the Disputed Domain Name and therefore is irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent’s name does not resemble the Disputed Domain Name in any manner. The Respondent has no connection or affiliation with the Complainant. The Complainant has not licensed or consented to the Respondent’s use of the GEICO trademark.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant argues that the Complainant’s GEICO trademark in respect of insurance services is well known. The Respondent registered the Disputed Domain Name long after the Complainant registered the GEICO trademarks. Also, the Respondent’s use of the GEICO trademark was to attract Internet users to the Respondent’s website. Furthermore, 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.
Also, the Complainant argues that the Disputed Domain Name currently redirects Internet users to a rotating set of various third-party websites, including to a website with apparent pay-per-click links to insurance offerings, a website that provides insurance referral services directly in competition to those of the Complainant, as well as to a website that appears to serve up malicious malware attacks on unsuspecting Internet users. Based on the Respondent’s selection and use of a domain name that incorporates the GEICO Mark in its entirety, the Complainant believes that the Respondent currently is using and has used the Disputed Domain Name to intentionally attempt to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to the Respondent’s own webpages by creating a likelihood of confusion with the Complainant, all for commercial gain
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following 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 SimilarThe Complainant is the owner of registered GEICO trademarks. The Disputed Domain Name includes the Complainant’s GEICO trademark in its entirety, with the addition of a “v” and the gTLD “.com”. The addition of the letter “v” does not prevent a finding of confusing similarity, as the Complainant’s GEICO trademark is clearly recognizable in the Disputed Domain Name.
GTLDs are generally disregarded when evaluating the identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark. In the current case, the inclusion of the gTLD “.com” does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s GEICO trademark.
For the reasons above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.”
Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
In the present case, the Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant also argued that it has not authorized or given any license to the Respondent in order to register, use or include the Complainant’s trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name or the GEICO trademark.
The Complainant stated that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks.
In these proceedings the Respondent is in default. Therefore, the Respondent did not present any evidence, which suggests that it is making a legitimate noncommercial or fair use of the Disputed Domain Name or is commonly known by the Disputed Domain Name or the name “vgeico”.
At the time of this Decision, the Disputed Domain Name resolves to a website with pay-per-click (“PPC”) links regarding the Complainant’s field of business. The use of the confusingly similar Disputed Domain Name to host a parked page comprising PPC links that compete with or capitalize on the reputation and goodwill of the Complainant’s mark does not represent a bona fide offering. See section 2.9 of the WIPO Overview 3.0. Similarly, the redirection of the Disputed Domain Name to various other commercial sites or sites misleading users to download malware does not confer rights or legitimate interests upon the Respondent. In conclusion, the Panel finds that the Disputed Domain Name does not reflect a website that could be consider a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
Furthermore, the Panel finds that, given the configuration of the Disputed Domain Name, it includes a risk of implied affiliation, sponsorship or endorsement by the Complainant, because the Disputed Domain Name contains the complete GEICO trademark with a “v” which is nearly identical to the Complainant’s trademark and domain names. See section 2.5.1 of the WIPO Overview 3.0.
For all the above-mentioned reasons, the Panel finds that the Complainant has fulfilled the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s GEICO trademarks are distinctive and have been registered before the registration of the Disputed Domain Name. The Complainant’s GEICO trademark has been recognized as well known in prior UDPR decisions, e.g., Government Employees Insurance Company (“GEICO”) v. Jun Yin,WIPO Case No. 2029-0037
At the time of the Decision, the Disputed Domain Name resolves to a website with PPC links regarding the Complainant’s field of business. By using the Disputed Domain Name, in which the Complainant’s GEICO trademark is the only distinctive element, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites. Thus, according to paragraph 4(b)(iv) of the Policy, the Respondent has registered and used the Disputed Domain Name in bad faith. Similarly, the use of a domain name for purposes of malware distribution constitutes bad faith, as has been found by numerous prior UDRP panels. See section 3.4 of the WIPO Overview 3.0.
For all the foregoing reasons, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and the Complainant has fulfilled the condition provided in paragraph 4(a)(iii) 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 Name
Ada L. Redondo Aguilera
Sole Panelist
Date: October 21 2021