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 Registration Private, Domains By Proxy, LLC, United States / Nathan Rausch, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 6, 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 August 9, 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 6, 2021.
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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2021.
The Center appointed Peter J. Dernbach 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.
4. Factual BackgroundThe Complainant is a US company that provides numerous types of insurance services since 1936.
The Complainant is the owner of the GEICO trademarks, including:
US trademark GEICO, registration number 0763274, registered since January 14, 1964; and
US trademark GEICO, registration number 2601179, registered since July 30, 2002.
The Complainant is the owner of
The Disputed Domain Name
The 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 generic and descriptive term “pro”, which is a common abbreviation for the word “professional”, does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Also, the
Top-Level Domain (“TLD”) “.com” does not have any impact on the overall impression of the Disputed Domain Name and is therefore 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. Although the Disputed Domain Name currently resolves to an inactive website that reads, “This site can’t be reached”, passively holding a domain name does not prevent a finding of bad faith registration and use.
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, the word “pro”, and the generic TLD “.com”. The word “pro” is a descriptive term that does not prevent a finding of confusing similarity as the Complainant’s GEICO trademark is clearly recognizable in the Disputed Domain Name. The Panel further notes that the word “pro”, which is a common abbreviation for “professional”, is often used to describe insurance services provided by the Complainant.
Generic TLDs 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 generic TLD “.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 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, the 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.”
The Complainant states that it has neither licensed nor authorized the Respondent to make any use of the Complainant’s GEICO trademark. According to the information provided by the Registrar, the Respondent’s name, “Nathan Rausch”, does not appear to be related to the Disputed Domain Name. The Disputed Domain Name currently resolves to an inactive website. Such use of the Disputed Domain Name is not a use in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and the burden of production shifts to the Respondent. The Respondent has not submitted any argument or evidence in response.
Therefore, based on the above, the Panel concludes that the Complainant has satisfied the second element in paragraph 4(a) 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”.
The Complainant’s GEICO trademarks are distinctive and have been registered long 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. DCO2020-0037,
Although the Disputed Domain Name currently resolves to an inactive website, considering the distinctiveness and fame of the Complainant’s GEICO trademarks, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the circumstances of this case. The Respondent’s failure to respond to the Complainant’s demand letter, and the continuation of its use of the Disputed Domain Name despite receiving the demand letter further evidences the Respondent’s bad faith use of the Disputed Domain Name. The Panel therefore concludes that the Disputed Domain Name has been used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and the Complainant fulfills the conditions 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
Peter J. Dernbach
Sole Panelist
Date: September 30, 2021