The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.
The Center appointed Miguel B. O’Farrell 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.
4. Factual BackgroundThe Complainant is an insurance company that claims to have provided numerous types of insurance services since 1936.
The Complainant is the owner of several federally registered trademarks and service marks that wholly incorporate the GEICO mark or iconic visual representations thereof, including the following registrations with the United States Patent and Trademark Office (USPTO).
United States Trademark Registration No. 763274 GEICO, registered on January 14, 1964, in class 36
United States Trademark Registration No. 2601179 GEICO, registered on July 30, 2002, in class 36.
The Complainant owns the domain name
The disputed domain name was registered on Februay 23, 2017 and resolves, through redirection, to a number of rotating websites, including the Complainant’s own website and the website of a direct competitor of the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant has over 17 million policies and insures more than 28 million vehicles. The Complainant also has over 40,000 employees, and is one of the fastest-growing auto insurers in the United States
The Complainant claims that the disputed domain name is confusingly similar to the trademark GEICO, in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, that the disputed domain name was registered and is used in bad faith.
More specifically, the Complainant has not authorized the Respondent to use and register its trademark, GEICO or to seek registration of any domain name incorporating said trademark.
The disputed domain name currently resolves, through redirection, to a number of rotating set of websites, including the Complainant’s own website, the website of a direct competitor of the Complainant and the website of an unrelated third party, in an apparent scheme for the Respondent to derive commissions from “affiliate marketing” programs.
The WhoIs page for the disputed domain name indicates that the Respondent has listed it for sale and the auction page to which the banner promoting the disputed domain name as being for sale lists the minimum bid as USD 500.
The Complainant´s counsel sent a cease and desist letter to the Respondent requesting the Respondent to discontinue using the Complainant’s trademark GEICO and to transfer the disputed domain name to the Complainant. The letter remained unanswered.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has proved to have rights in the trademark GEICO.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s GEICO trademark.
The disputed domain name incorporates the Complainant’s trademark GEICO in its entirety with the addition of the words “insurance” and “quotes”; the Complainant’s mark being the distinctive and prominent element of the disputed domain name. The addition of those two words related to the Complainant’s insurance business do not avoid the confusing similarity between the disputed domain name and the Complainant’s GEICO mark.
The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the GEICO trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” As indicated in Section 6.A above, the disputed domain name is confusingly similar with the GEICO trademark.
The Respondent’s use of the disputed domain name to redirect Internet traffic demonstrates bad faith under the Policy (Govern WIPO Overview 3.Govermental Employees Insurance Company v. Jerome Crawford, April 7, 2019,WIPO Case No. D2019-0112), (finding bad faith based on “the renown of the GEICO mark” and the redirection, even without any use of the GEICO mark on the Respondent’s website, and even without selling competing services, is enough to imply affiliation to Internet users looking for GEICO who are redirected to the Respondent’s website).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad FaithThe fame of the Complainant’s trademark GEICO has been acknowledged in previous UDRP cases as one of the most recognizable insurance brands in the United States and indeed known throughout the world. See Government Employees Insurance Company (“GEICO”) v. (yinjun),WIPO Case No. D2020-3332.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark GEICO mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name.
In accordance with section 3.1.4 of WIPO Overview 3.0, the Panel considers that the inclusion of the Complainant’s widely known GEICO trademark in the disputed domain name creates a presumption of bad faith.
The Respondent when registering the disputed domain name, has targeted the Complainant’s famous trademark GEICO with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own monetary benefit.
The Complainant has proved that the Respondent has placed the disputed domain name on sale for USD 500, which would seem to be in excess of any of the Respondent’s possible “documented out-of-pocket costs directly related to the disputed domain name” (section 3.1.1 of WIPO Overview). In the circumstances, this could allow an additional inference of bad faith.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Respondent’s failure to respond to the Complainant’s cease and desist letter also supports an inference of bad faith registration and use of the disputed domain name (Sunovion Pharmaceuticals Inc. v. Lucio Peacock of June 25, 2018,WIPO Case No. D2018-0802).
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s famous GEICO trademark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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
Miguel B. O’Farrell
Sole Panelist
Date: October 10, 2021