The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (the “United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Joe Gagliardi, Joe Gagliardi, United States.
2. The Domain Names and RegistrarsThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 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 amendment to the Complaint on August 18, 2021. On August 18, 2021, the Respondent sent various email communications.
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 of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. The Response was filed with the Center on August 19, 2021. In its Response, the Respondent offered to sell the Domain Names to the Complainant. On August 19, 2021, the Center sent to the parties a communication of Possible Settlement, but on August 23, 2021, the Complainant replied that it was not interested in a settlement for money but only in a voluntary transfer of the Domain Name. On August 26, 2021, the Respondent sent another communication to the Center. Finally, on September 24, 2021, the Respondent sent a final informal communication to the Center stating, “Our side did respond multiple times please make note.”
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 29, 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 BackgroundThe Complainant GEICO, which is an acronym for Government Employees Insurance Company, was founded in 1936 and is one of the largest automobile insurance companies in the United States, heavily advertised under the GEICO mark in print and broadcast media in all states as well as online. Its trademark holdings include United States registrations for GEICO as a standard character mark, numbers 763274 (registered January 14, 1964) and 2601179 (registered July 30, 2002). The Complainant’s market originally focused on federal government employees but expanded to a more general base from 1974 and now insures more than 28 million vehicles, according to the Complainant’s website at “www.geico.com”.
According to the Registrar’s WhoIs database, both Domain Names were registered on March 31, 2021. The Registrar was first named as the Respondent, but when notified of the Complaint the Registrar identified the underlying registrant as Mr. Gagliardi (who listed his organization as “Joe Gagliardi”). Hence, only Mr. Gagliardi is referred to hereafter as the “Respondent”. The emails from the Respondent refer to the Respondent’s business as an auto body and collision repair facility, without further elaboration.
The Complaint attaches a screenshot of the landing page at “www.natickcollision.com” to which the Domain Names formerly redirected, inviting visitors to click a link to visit the “full website” at “www.coachandcarriageautobody.com” operated by Coach and Carriage Auto Body, an automobile repair firm with three locations in Massachusetts, United States. The Panel notes that the online database of the Massachusetts Corporations Division lists the Respondent Mr. Gagliardi as the President of Coach and Carriage Auto Body, Inc., a registered corporation at the same postal address as that given on the website linked from the Domain Names (hereafter the “Respondent’s website”).
At the time of this Decision, the Domain Names each resolve to an error message hosted by the Registrar.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Names are confusingly similar to its distinctive GEICO trademark, which the Respondent has no permission to use and in which the Respondent has no rights or legitimate interests.
The Complainant argues that the GEICO mark is famous and is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant, quoting Telstra Corporation. Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Furthermore, as a professional automobile repair provider, the Respondent would be expected to interface regularly with the major insurance companies. “Simply put, (…) there is no conceivable contemplated use of the Disputed Domain Names that would not be an infringing use by the Respondent. As such, they are currently being used in bad faith in violation of the Policy.”
B. RespondentThe Respondent never submitted a Response with a certification of completeness and accuracy as required by the Rules, paragraph 5(c)(viii). The Panel takes this into account in weighing the credibility of the Respondent’s assertions and arguments. Instead, the Respondent sought in a succession of emails to negotiate a sale of the Domain Names and argued that the Complainant is acting in “bad faith” against a company that is not actually a competitor. As the Respondent summarized in the August 26, 2021 email to the Center:
“The name we are using is geicocollision and geicoautobody, which is not trademarked and cannot be considered a part of the use because it is a separate business and the name in part is a completely different meaning to the general equipment company we will be using.
We officially ask WIPO to dismiss this case as there is a bad faith negotiation on their part and they dont [sic] want to have any negotiation, only legal proceedings. These tactics are against WIPO rules of bullying and unreasonable demands, and against United Nations guidelines for appropriateness in behavior.”
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for GEICO. The Domain Names incorporate that acronym in its entirety and add the dictionary words “autobody” and “collision”. These additions do not prevent a finding of confusing similarity. See id, section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that both Domain Names are confusingly similar to the Complainant’s registered marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant has demonstrated trademark rights, the Respondent’s lack of permission to use the Complainant’s mark, and the Respondent’s use of the Domain Names for a commercial auto repair website with Domain Names that misleadingly suggest an association with the Complainant.
This shifts the burden to the Respondent, and the Respondent has not demonstrated any relevant rights or interests in the “geico” portion of the Domain Names. Consequently, the Panel finds that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 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 your website or location or of a product or service on your website or location.”
GEICO is a distinctive, long-established, and heavily advertised United States trademark for automobile insurance, which is used when consumers or businesses make claims to repair damage to insured vehicles. The Respondent operates a United States business avowedly specializing in automobile and collision repairs, so it is simply not credible that the Respondent would be unaware of the mark, and the Respondent does not deny prior knowledge of it. See Government Employees Insurance Company (“GEICO”) v. Jun Yin,WIPO Case No. DCO2020-0037 (when a “disputed domain name entirely reproduces the distinctive GEICO mark, (…) [it is] highly unlikely without knowledge of the Complainant or its marks”).
The Respondent argues that there is no intended confusion because the Complainant does not actually perform repair services and the Respondent does not sell insurance, but the businesses are related and the Domain Names readily suggest a false association or endorsement, such as an indication of GEICO-recommended repair facilities. The Respondent is not privileged to make such use of the Complainant’s trademark without permission.
The Panel finds no reasonable explanation for incorporating the distinctive “geico” string in the Domain Names other than to suggest, falsely, an association with the Complainant and thus attract potential customers to the Respondent’s auto repair facilities by misdirection (congruent with the illustration of bad faith in the Policy, paragraph 4(b)(iv)) and possibly with the hope of extorting an offer for the Domain Names from the trademark owner (as contemplated in paragraph 4(b)(i)).
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names,
W. Scott Blackmer
Sole Panelist
Date: October 13, 2021