The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on August 18, 2021.
The Center verified that the Complaint together with the amended 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 September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 28, 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 well-known insurance company that has provided numerous types of insurance services since 1936, including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance.
The Complainant, that is one of the fastest-growing insurers in the United States, has over 40,000 employees, 17 million policies, and insures more than 28 million vehicles.
For the purpose of its activities, the Complainant holds several trademarks (the “GEICO trademark”), including:
- the United States trademark GEICO no. 763,274, registered on January 14, 1964, in class 36;
- the United States trademark GEICO no. 2,601,179, registered on July 30, 2002, in class 36.
The Complainant has established a website located at “www.geico.com” on which are promoted and sold its motor vehicle insurance services.
The disputed domain names
At the time of the complaint, the disputed domain names directed Internet users to a rotating set of various third-party websites. At the time of the decision, the disputed domain names direct Internet users to a parking page with several pay-per-click (“PPC”) links.
The Panel is requested to transfer the disputed domain names to the Complainant.
5. Parties’ Contentions A. ComplainantIn accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First, the Complainant stands that the disputed domain names are identical or confusingly similar to its registered trademarks, since they incorporate the distinctive GEICO trademark, regardless of the additional terms or letters in each of the disputed domain names.
The Complainant adds that, with respect to the disputed domain name
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, given that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner.
The Complainant also believes that the Respondent has never been known by the disputed domain names.
The Complainant underlines that the use of the disputed domain names to redirect to third-party websites is not a legitimate interest, since it does not demonstrate a use in connection with a bona fide offering of goods and services.
At last, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith, since due to the well-known and distinctive character and reputation of the GEICO trademark, the Respondent must have been aware of the Complainant and the GEICO trademark when registering the disputed domain names.
The Complainant considers that the Respondent must have expected that any use of the disputed domain names would cause harm to the Complainant, since the disputed domain names that wholly incorporate the GEICO trademark are so “obviously indicative” of being authorized by the Complainant that their use would “inevitably lead to confusion of some sort”.
The Complainant finds that the Respondent’s use of the disputed domain names to revert, through redirection, to a website that appears to distribute malware or to various third-party sites, including unrelated websites that feature services that compete with the Complainant, constitutes bad faith.
The Complainant also states that the disputed domain names are advertised for a minimum sale value of USD 899, which is far in excess of any out-of-pocket expenses directly related to the disputed domain names, and that the Respondent did not answer to its demand letter, what further demonstrates the Respondent’s bad faith registration and use.
The Complainant finally highlights that the Respondent has a history of abusively registering and using domain names incorporating third-party trademarks, since the Respondent has been identified as a respondent in 95 UDRP actions, so that no good faith can be inferred from the Respondent’s registration and use of the disputed domain names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the GEICO trademark.
Then, the Panel notices that the disputed domain names
The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names.
This test typically involves a side-by-side comparison of the domain names and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the disputed domain names, the Panel finds that they incorporate the entirety of the GEICO trademark. Accordingly, the additional letters or terms do not prevent a finding of confusing similarity.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.
These circumstances are:
- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Respondent has no connection or affiliation with the Complainant, which has never granted the Respondent any license or consent to use the GEICO trademark in any manner.
Moreover, the Panel finds that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain names, or that the Respondent is making a legitimate noncommercial or faire use of the disputed domain names, without intent for commercial gain. On the contrary, the Respondent has constructed disputed domain names consisting of the Complainant’s well-known mark entirely, together with terms or an additional letter, in an intent to suggest affiliation or sponsorship of the disputed domain names by the Complainant. Such a risk of implied affiliation cannot constitute fair use nor confer rights nor legitimate interests upon the Respondent.
Finally, prior UDRP panels have held that the use of a domain name for a PPC site where such links compete with or capitalize on the reputation and goodwill of a complainant’s mark does not represent a bona fide offering.
In any case, the Respondent did not reply to the Complainant’s contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain names have been registered and are being used in bad faith.
Thus, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on the respondent’s website or location.
First, the Panel finds that it is established that the Complainant’s GEICO trademark was registered long before the registration of the disputed domain names, and that it is unlikely that the Respondent did not know the Complainant and the prior GEICO trademark at the time of the registration of the disputed domain names, given its reputation and age, which constitutes an evidence of the Respondent’s bad faith in registering the disputed domain names.
Moreover, the construction of the disputed domain names themselves suggest an awareness of the Complainant and its activities. In the disputed domain name
Then, the Panel considers that the Complainant demonstrated that the Respondent used the disputed domain names in order to revert, through redirection, to a website that appears to distribute malware or to various third-party sites, including unrelated websites that feature services that compete with the Complainant, and at the time of the decision the Panel finds that the disputed domain names redirect Internet users to parking pages containing PPC links.
In any case, these uses of the disputed domain names constitute an intentional attempt of the Respondent to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s GEICO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, which is a scenario constituting evidence of the Respondent’s bad faith in using the disputed domain names.
Moreover, the Panel considers that the fact the disputed domain names are advertised for a minimum sale value of USD 899, which shows that the Respondent has registered the disputed domain names also for the purpose of selling them for valuable consideration in excess of any out-of-pocket costs that could directly be related to the disputed domain names, which constitutes evidence of the Respondent’s bad faith as well.
Finally, the Respondent’s history of abusively registering and using domain names incorporating third-party trademarks that has been highlighted by previous Panels indicates that the Respondent is used to register and use domain names in bad faith, and further persuades of its bad faith in registering and using the disputed domain names
Consequently, the Panel holds that the Respondent has registered and used the disputed domain names in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
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 names
Christiane Féral-Schuhl
Sole Panelist
Date: November 11, 2021