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, Domain Service, Inc, 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 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 10, 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 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 19, 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
According to the information provided by the Registrar and provided in the WhoIs database, the Disputed Domain Name was registered by the Respondent on June 25, 2021. At the time of filing of the Complaint, the Disputed Domain Name redirected 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 contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant argues that the Disputed Domain Name incorporates the distinctive GEICO trademark in its entirety and is therefore identical or confusingly similar to the Complainant’s GEICO trademark regardless of the additional generic or descriptive term “bank” in 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. The Respondent’s apparent use of the Disputed Domain Name to generate pay-per-click revenue or to distribute malware is not use in connection with a bona fide offering of goods and services and thus, is not a legitimate interest.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Due to the well-known and distinctive character and reputation of the Complainant’s GEICO trademarks, the Respondent must have been aware of the Complainant and its GEICO trademarks when registering the Disputed Domain Name. The Disputed Domain Name incorporates the Complainant’s famous GEICO trademark in its entirety and merely adds the descriptive or generic term “bank” thereby creating a presumption of bad faith.
The Respondent’s use of the GEICO trademark to attract Internet users to the Respondent’s website, knowing that the Complainant has not authorized it to do so is evidence of bad faith. The Respondent must have expected that any use of the Disputed Domain Name would cause harm to the Complainant. Also, the fact that the Disputed Domain Name resolves to a website containing apparent “pay-per-click” hyperlinks to third-party websites featuring services provided by the Complainant’s competitors is evidence of use in bad faith.
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;
(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 SimilarParagraph 4(a)(i) 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 provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the owner of the GEICO trademark. The Disputed Domain Name
GTLDs generally are disregarded when evaluating the identity or confusing similarity between the disputed domain name and the complainant’s mark. 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 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.”
The Complainant states that it has neither licensed nor agreed that the Respondent can make any use of the Complainant’s GEICO trademark in a domain name or in any other manner. According to the information provided by the Registrar, the Respondent’s name does not appear to be related to the Disputed Domain Name. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “Geico”.
The Complainant also provides screenshots from the websites located at the Disputed Domain Name, which shows that the Disputed Domain Name redirects various websites including the website with pay-per-click links and the website distributing malware. The Respondent’s use of the Disputed Domain Name to generate pay-per-click revenue or distribute malware is not use in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any response to the Complaint and did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.
Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled
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 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,
At the time of this Decision, the Disputed Domain Name resolves to a website with pay-per-click 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 website. Thus, according to paragraph 4(b)(iv) of the Policy, the Respondent has registered and used the Disputed Domain Name in bad faith.
At the time of filing of the Complaint, the Disputed Domain Name, as described above, also redirected to a website distributing malware, which does not prevent a finding of 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 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,
Peter J. Dernbach
Sole Panelist
Date: October 3, 2021