WIPO Domain Name Decision D2021-2716 for geicobestof.com, geicohomesite.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company v. Registrant Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2021-2716 1. The Parties

The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.

The Respondent is Registrant Private, Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain names and are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in relation to the disputed domain name on August 19, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.

On September 1, 2021 the Complainant requested that proceeding D2021-2724 in relation to be consolidated with this proceeding on the basis that the Notices for Registrant Information for either case showed that both disputed domain names were owned by the Respondent.

The Center appointed Alistair Payne as the sole panelist in this matter on October 8, 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.

On October 27 2021, the Panel issued a Panel Order to the parties in the following terms:

“The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021, in relation to the disputed domain name .

On September 1, 2021, the Complainant submitted an amended Complaint requesting that the proceedingWIPO Case No. D2021-2724 in relation to be consolidated with this proceeding on the basis that the Notices for Registrant Information in either case showed that both the disputed domain names were owned by the same Respondent.

Noting that the registrant information provided by the Registrar of the Additional Domain Name is the same for the disputed domain name , the Panel accepts the Complainant’s request to consolidate both disputed domain names in the present proceedings.

Accordingly, the Panel requests the Complainant to withdraw the proceeding D2021-2724 and requests the Center to inform the Registrar that the disputed domain name is now the subject of this current proceeding and should remain locked.

Additionally, the Panel grants the Respondent ten (10) calendar days from the date of this Administrative Panel Order to answer the Complaint in relation to the Additional Domain Name or to indicate whether it wishes to participate in this proceeding.

In the absence of a response by November 6, 2021, the Panel will proceed to issue its decision.

The Panel informs the Parties that the due date to submit the Decision to the Center is extended to November 12, 2021.”

No response was received by the Center by November 6, 2021.

4. Factual Background

The Complainant is a United States based insurance company that has provided a wide range of insurance services since 1936. It has over 17 million policies, insures more than 28 million vehicles and has over 40,000 employees. It has traded under the GEICO mark for nearly 80 years and owns various trade mark registrations for its GEICO mark including United States trade mark registration 763274 registered on January 14, 1964. The Complainant has established a website located at “www.geico.com”, which it uses to promote and sell and manage its insurance services.

The disputed domain name was registered on December 24, 2018 and resolves to a number of rotating third-party websites that are not affiliated with the Complainant. These include third-party websites that purport to compare the prices for products and services that compete with the Complainant, websites that warn users that their anti-virus software requires updating, and/or parked pages consisting of apparently auto-generated pay-per-click links to third parties’ products and services, including to direct competitors of the Complainant.

The disputed domain name was registered on August 2, 2018andredirects Internet users to a rotating set of various third-party websites, including to a third-party website that purports to provide price comparison services for the Complainant’s direct competitors, to a website that appears to serve up malicious malware attacks on unsuspecting Internet users and to a website warning users that their anti-virus software requires updating.

5. Parties’ Contentions A. Complainant

The Complainant submits that it owns registered trade mark rights for its GEICO mark as noted above. It says that as the disputed domain names wholly contain its GEICO mark, the disputed domain names are therefore confusingly similar to the GEICO mark, regardless of the addition of the descriptive or generic phrase “best of” or “homesite” in the disputed domain names.

The Complainant says that the Respondent has no connection or affiliation with it and has not received any license or consent, express or implied, to use the GEICO mark in a domain name or in any other manner. Furthermore, says the Complainant, it believes that the Respondent has never been known by the disputed domain names. It alleges that the Respondent’s misappropriation of the GEICO mark in the disputed domain names is no accident in that where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant says that the Respondent’s use of the disputed domain name exclusively to redirect Internet users to other websites suggests that the Respondent is using the disputed domain names as part of a scheme to collect click-through advertising revenue, which demonstrates neither a bona fide offering of goods or services nor a legitimate interest. It notes also that the Respondent’s use of to revert to a website that appears to distribute malware has categorically been held by Panels to amount to using a domain name for illegal activity, which can never confer rights or legitimate interests on a respondent.

The Complainant submits that its GEICO mark is famous and is one of the most recognisable insurance brands in the United States and indeed, is known throughout the world. See Government Employees Insurance Company (“GEICO”) v. 尹军 (yinjun),WIPO Case No. D2020-3332 and that the Respondent’s incorporation of the GEICO trade mark into the disputed domain names accordingly creates a presumption of bad faith.

It says that the Respondent’s use of the GEICO mark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorised it to do so, is evidence of bad faith. It submits that the fact that the disputed domain names wholly incorporate the GEICO mark is so “obviously indicative” of being authorised by the Complainant that the Respondent’s use of the disputed domain names would “inevitably lead to confusion of some sort.

It notes that the Complainant’s rights in the GEICO mark also would have been obvious through basic domain name searches and other searches of the USPTO records that are readily accessible online and that the Respondent’s illicit registration and use of the disputed domain names long after the registration of the Complainant’s trade mark rights is evidence of bad faith registration and use of the disputed domain names.

The fact that the is advertised for sale for USD 899, far in excess of any out-of-pocket expenses directly related to that disputed domain name, strongly suggests says the Complainant, that the Respondent was aware of the Complainant’s trade mark and its business when it registered and that the Respondent’s intention in registering this disputed domain name was for financial gain, all in bad faith. Furthermore, says the Complainant, it is well-settled that the Respondent’s use of to revert, through redirection, to a website that the Complainant suggests appears to distribute malware constitutes bad faith.

The Complainant also submits that the Respondent’s failure to respond to the Complainant’s request to transfer in its cease-and-desist email further supports a finding of bad faith. It notes also that the Respondent has a history of abusively registering and using domain names incorporating third-party trade marks, a fact that other panels have found demonstrates bad faith under paragraph 4(b)(ii) of the Policy. Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0501. The Complainant notes that in this case the same Respondent was identified as a respondent in 95 UDRP actions.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant, on September 1, 2021, after these proceedings had been notified to the Respondent, requested that proceeding D2021-2724 in relation to be consolidated with this proceeding in terms of Rule 3 (c) of the Rules, on the basis that the Notices for Registrant Information for either case showed that both disputed domain names were owned by the Respondent. The Complainant filed an Amended Complaint in these proceedings on September 1, 2021.

The Panel issued a Panel Order on October 27, 2021 in the terms set out above confirming the request for consolidation but inviting the Respondent to respond to it or to participate in these proceedings in relation to the consolidated proceedings. No response was received within the timeframe granted.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns United States trade mark registration 763274 for its GEICO mark which was registered on January 14, 1964.

Each of the disputed domain names wholly incorporate the GEICO mark and each is therefore confusingly similar to the Complainant’s GEICO mark. Neither the addition of the expression “best of” in nor the addition of “homesite” in prevents a finding of confusing similarity.

Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no connection or affiliation with it and has not received any license or consent, whether express or implied, to use the GEICO mark in a domain name or in any other manner. The Complainant has further submitted that it believes that the Respondent has never been known by either of the disputed domain names.

It alleges that the Respondent’s misappropriation of the GEICO mark in each of the disputed domain names is no accident and was chosen because of the degree of renown attaching to the GEICO mark in order to redirect Internet users to third party websites so that the Respondent could collect click-through advertising revenue. This amounts, says the Complainant, to neither a bona fide offering of goods or services nor a legitimate interest in the disputed domain name.

Each of the disputed domain names appears to re-direct to a number of sites including, in particular, to a comparison insurance site that advertises and leads Internet users to the Complainant’s competitors which is inconsistent with the bona fide or legitimate use of each of the disputed domain names.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the disputed domain names, which case has not been rebutted by the Respondent. The Panel finds for this reason and for the reasons set out under Part C below that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain names were both registered in 2018 many years after the Complainant’s registration of its GEICO mark in the United States under registration number 763274. The Panel notes that the Complainant’s GEICO mark is a highly distinctive term that appears to be derived from the initials of the Complainant’s corporate name. It has developed a very substantial degree of renown, both in the United States and elsewhere, as has been recognized by past panels (for example see Government Employees Insurance Company (“GEICO”) v. 尹军 (yinjun),WIPO Case No. D2020-3332). In addition, the Complainant has a substantial Internet presence and a simple Google search would have revealed the Complainant’s mark and Internet presence. As a result, the Panel finds it most likely that the Respondent was well aware of the Complainant’s GEICO mark when it registered the disputed domain names and as discussed below registered it intentionally with knowledge for its own commercial purposes.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of a disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

Based on the evidence submitted by the Complainant, the disputed domain name , resolves on a rotating basis to third-party websites that purport to compare the prices for products and insurance services that compete with the Complainant, websites that warn users that their anti-virus software requires updating, and/or parked pages consisting of apparently auto-generated pay-per-click links to third parties’ products and services, including to direct competitors of the Complainant. It is apparent that the Respondent has used this disputed domain name to seek to attract and confuse Internet users to these sites for its own commercial gain. This is evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant has also submitted evidence that the disputed domain name redirects Internet users to a rotating set of various third-party websites, including to a third-party website that purports to provide price comparison services for the Complainant’s direct competitors, to a website that appears to serve up malicious malware attacks on unsuspecting Internet users and to a website warning users that their anti-virus software requires updating. It is apparent that the Respondent has also used this disputed domain name to seek to attract and confuse Internet users to these sites for its own commercial gain. This is evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

In addition, the fact that the disputed domain name is advertised for sale for USD 899, far in excess of any out-of-pocket expenses directly related to that disputed domain name is indicative of the Respondent’s intention in registering this disputed domain name having been in the main for its own financial gain and therefore in bad faith. The Respondent’s use of the disputed domain name to revert, through redirection, to a website that the Complainant suggests appears to distribute malware is in itself evidence of bad faith.

Further, not only did the Respondent fail to respond to the Complainant’s cease and desist email sent in August 2021 or to explain its registration of the disputed domain names, each containing the Complainant’s highly distinctive GEICO mark, but the Respondent appears to have a long history of cybersquatting. In Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0501 the Panel notes that the Respondent had been identified as a respondent in 95 prior UDRP actions. The Respondent’s conduct in this regard therefore also fulfils the requirements of paragraph 4(b)(ii) of the Policy in that it appears to have registered each of the disputed domain names in order to prevent the Complainant as owner of the GEICO service mark from reflecting the mark in a corresponding domain name, in circumstances that it has previously engaged in a pattern of such conduct both in relation to the Complainant and to other trade mark owners. This amounts to further evidence of registration and use of each of the disputed domain names in bad faith under the Policy.

As a result, the Panel finds that the Complaint in relation to each of the disputed domain names also succeeds under this element of the Policy.

7. Decision

For 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 and be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: November 9, 2021

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