The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Contact Privacy Inc. Customer 0154088786, Canada / Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 25, 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 26, 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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on September 22, 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, founded in 1936, is an insurance company that has traded under the GEICO mark extensively for nearly 80 years. At the time of lodging the Complaint the Complainant had over 17 million policies, insured more than 28 million vehicles and had over 40,000 employees.
The Complainant presented evidence of registration of its GEICO trade mark in the United States, including Registration Number 763,274 for the mark GEICO in class 36 with a registration date on January 14, 1964. In addition, and most relevant for this matter, the Panel has independently established that the Complainant owns International Registration Number 1178718 for the mark GEICO designating the European Union, with a registration date in 2013. The Respondent’s home territory of Romania falls within the European Union.
The Domain Name was registered on February 28, 2019 and, as at the drafting of this Decision, resolved to a parked page displaying pay-per-click (“PPC”) advertisements for insurance services that, amongst others, compete with the Complainant. The Domain Name has also, in the past, redirected to websites offering third party antivirus software for sale. The Domain Name was also advertised for a minimum sale value of USD 688.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its mark, that the Respondent has no rights or legitimate interests in it, and the Domain Name was registered and used in bad faith given that it takes advantage of the Complainant’s well-known mark to divert consumers to competing services using PPC advertisements, and the Domain Name was offered for sale in excess of the Respondent’s out-of-pocket costs, and the Respondent has a history of cybersquatting.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarWhere the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s mark is the most prominent element of the Domain Name and the remainder, apart from the generic Top-Level Domain “.com”, consists of the term “game” which does not prevent a finding of confusing similarity with the Complainant’s mark. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, and the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name (WIPO Overview 3.0 at section 2.1). The Complainant’s mark was registered (including in the Respondent’s jurisdiction) and well-known long prior to the registration of the Domain Name, as confirmed in numerous UDRP cases (e.g., Government Employees Insurance Company (“GEICO”) v. Jun Yin,
WIPO Case No. DCO2020-0037). The Domain Name is confusingly similar to the Complainant’s mark and the Complainant has certified that the registration of the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain.
The Domain Name has been used for a parked page comprising PPC advertisements linked to commercial websites offering insurance services which, inter alia, compete with the Complainant. Panels have found that use of a domain name to host PPC links does not represent a bona fide offering of goods or services where such links compete with the complainant’s mark (WIPO Overview 3.0 at section 2.9).
The Respondent’s use of the Domain Name to also at one point redirect Internet users to a website offering third party antivirus software for sale does not, in the circumstances of this case, confer rights or legitimate interests on the Respondent (WIPO Overview 3.0 at section 2.5.3). Without any Response, there is no explanation as to why there could be any legitimate reason for the Respondent to register the Domain Name incorporating the Complainant’s well-known trade mark for unrelated goods or services of third parties, and it is therefore likely that the Domain Name was registered in order to take unfair advantage of the Complainant’s mark (Boursorama S.A. v. Pencreach Jacques,
WIPO Case No. D2021-1195).
The other use of the Domain Name is its advertisement for sale. Offering a domain name containing a well-known trade mark for sale, and at that for a sum in excess of the costs of registration is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. For the reasons detailed above and below, it is clear that the Domain Name was registered and used in order to profit from the Complainant’s mark.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s mark has no ordinary meaning and is highly specific to the Complainant. This indicates that the Domain Name was registered with the Complainant’s mark in mind (Bayer Aktiengesellschaft v. H. Monssen,
WIPO Case No. D2003-0275).
The Domain Name has been used to advertise competitors of the Complainant with PPC advertisements, which is a clear indicator of targeting for commercial gain under paragraph 4(b)(iv) of the Policy. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,
WIPO Case No. D2011-1753. Although the advertisements may be served programmatically by a third party, the Respondent cannot disclaim responsibility for them (WIPO Overview 3.0 at section 3.5).
The Complainant established that the Respondent has been found to have engaged in a pattern of bad faith conduct in two prior UDRP cases. The Panel has independently established that the Respondent has been the unsuccessful respondent in no less than 207 cases decided under the Policy. It is clear that the Respondent is a serial cybersquatter and this case is merely a continuation of that pattern. Paragraph 4(b)(iv) of the Policy is eminently applicable here.
The circumstances are such that it is likely that the Respondent’s intention was, at least in part, to sell the Domain Name to the Complainant (WIPO Overview 3.0 at sections 3.1.1). The Domain Name is listed for sale for USD 688, which is likely, without evidence from the Respondent to the contrary in excess of the Respondent’s out-of-pocket expenses relating directly to the Domain Name. Thus, paragraph 4(b)(i) of the Policy is also applicable.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for commercial gain.
The Complainant has satisfied 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 Domain Name,
Jeremy Speres
Sole Panelist
Date: October 6, 2021