The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“US”), represented by Burns & Levinson LLP, US.
The Respondent is Domain Administrator, Hong Kong, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 20, 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 amended Complaint on August 25, 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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 6, 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, is a well-known insurance company incorporated in Maryland, US. It has been providing insurance services since 1936. It offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella and overseas insurance.
It has been trading under the trade mark GEICO for nearly 80 years and owns exclusive rights in the mark. It also owns numerous trade marks which incorporate the mark GEICO or iconic visual representations thereof.
It relies particularly upon the following registrations with the US Patent and Trademark Office:
GEICO
Classes 35 and 36
No. 763,274
Registered January 14, 1964
GEICO
Class 36
No. 2,601,179
Registered July 30, 2002
Copies of the certificates of registration for the above marks are annexed as Annex C to the Complaint.
The Complainant has made extensive use of the mark GEICO in connection with its services. It invests large sums to promote and develop the mark so that it has become a “powerful, recognizable symbol” of the Complainant’s goodwill and reputation.
The mark GEICO through long and extensive use has become uniquely associated with the Complainant and its services. The Complainant has over 17 million policies and insures over 28 million vehicles. It has over 40,000 employees and is one of the fastest-growing motor insurers in the US. It has website located at “www.geico.com” which it uses to promote its policies. A screenshot of the home page from the website is annexed as Annex D to the Complaint.
The disputed domain name was registered on January 3, 2015 and resolved to a website offering for sale anti-virus products and virtual private network (VPN) products, among others. A screenshot of that website is annexed as Annex E to the Complaint.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true.
5. Parties’ Contentions A. ComplainantThe Complainant submits on the evidence:
i. the disputed domain name, consisting only of the mark GEICO, the generic phrase “my policy”, and a generic Top Level Domain (“gTLD”), is confusingly similar to the trade mark GEICO in which the Complainant owns prior registered rights.
ii. the Respondent has no rights or legitimate interests in the disputed domain name.
iii. the disputed domain name was registered and is being used in bad faith by the Respondent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarOn the evidence adduced by the Complainant and set out above it is the registered owner of US registrations for the mark GEICO, which predate the date of registration of the disputed domain name on January 3, 2015.
The mark GEICO is incorporated into the disputed domain name in its entirety together with the descriptive term “mypolicy”. The addition of the term “mypolicy”, which is descriptive of the activity of the Complainant i.e., the writing of insurance policies, does not prevent a finding of confusing similarity under the first element of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
It is well-established that the use of a gTLD, in this case “.com”, can be disregarded in determining confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the mark GEICO in which the Complainant has prior registered rights within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name because there is no evidence demonstrating:
i. the Respondent’s use of the disputed domain name or demonstrable preparations to use the disputed domain name relating to a bona fide offering of goods or services;
ii. the Respondent is commonly known by the disputed domain name; and
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In this case the mark GEICO is, on the evidence, famous and therefore one which a third party would not legitimately choose to use unless seeking to create an impression of an association with the Complainant.
In support of this contention the Complainant relies upon a number of earlier UDRP panel decisions in which the Complainant was a party, including Government Employees Insurance Company (“GEICO”) v (yinjun),WIPO Case No. D2020-3332 where that panel found the trade mark GEICO to be “known throughout the world” so that it should be presumed that the respondent in that case know or should have known about the Complainant’s mark.
The Complainant exhibits as Annex E to the Complaint evidence of the Respondent’s website advertising and offering for sale an anti-virus product of a third party. Users were directed to that website by the Respondent’s use of the disputed domain name. This use does not constitute a legitimate fair use or bona fide offering of goods or services under the disputed domain name in the present circumstances.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely‑known mark and related descriptive terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
In the Panel’s view, taking into account the lack of a Response and the absence of contrary evidence, the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name within Paragraph 4(a)(ii) of the Policy.
Relying upon the evidence that the trade mark GEICO is a famous mark, the Complainant submits that the incorporation of the mark into the disputed domain name creates a presumption of bad faith.
Based upon the evidence of the Respondent’s website contained in Annex E, the Respondent was seeking to attract Internet users to the Respondent’s website knowing that the Complainant had not authorized it to do so. Such use is prima facie evidence of bad faith as shown, for example, in the earlier decision of SANOFI-AVENTIS v Andris Maupalis,WIPO Case No. D2007-1341 cited by the Complainant.
The Complainant submits that its rights in the mark famous GEICO would have been “obvious” through basic searches. In this context, and noting also the choice of additional terms in the disputed domain name, the Panel finds that the Respondent likely knew, or at minimum should have known, of the Complainant’s rights in GEICO. This is evidence of registration in bad faith.
The Complainant refers to the fact that after becoming aware of the disputed domain name its counsel contacted the Respondent to request that the Respondent cease its infringing use of the mark GEICO and transfer it to the Complainant. A print out of this letter is annexed as Annex F to the Complaint. No response to that letter has been received from the Respondent. The Panel rightly regards this as further evidence of bad faith.
Taking into account the above evidence and the absence of a Response the Panel finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith within 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
Clive Duncan Thorne
Sole Panelist
Date: October 20, 2021