The Complainant is Government Employees Insurance Company (“GEICO”), United States (the “United states”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o., Czech Republic / Hulmiho Ukolen, Poste restante, Finland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 29, 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 30, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 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 defines itself as an internationally well-known insurance provider who has provided insurance services, including insurance brokerage and underwritings throughout the United States since at least 1948.
The Complainant is the owner of many trademark registrations for GEICO, including the following:
United States Trademark Registration No. 0763274 GEICO, dating back to January 14, 1964,
United States Trademark Registration No. 2601179 GEICO, dating back to July 30, 2002,
International Trademark Registration No. 1178718, dating back to September 4, 2013.
The Complainant owns the domain name
The disputed domain name was registered on August 9, 2015 and resolves, through redirection, to various third-party websites unaffiliated with 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 with 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 rotating set of third-party websites unaffiliated with the Complainant 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 by including hyperlinks in the top promotional banner directing users to “Visit our partner to buy
The Complainant’s counsel sent a cease and desist letter to the Respondent on August 2, 2021, 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 word “games” and the “.com” generic Top-Level Domain; the Complainant’s mark being the distinctive and prominent element of the disputed domain name. Neither the word “games”, nor the gTLD “.com” prevent the confusing similarity between the disputed domain name and the Complainants’ 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 (Government Employees Insurance Company v. Jerome Crawford,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. 尹 军 (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 website where the “Visit our partner to buy geicongames.com” hyperlink resolves shows that the disputed domain name is on sale for $8,138, which would seem to be far 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 (sent on April 27, 2021) also supports an inference of bad faith registration and use of the disputed domain name. Sunovion Pharmaceuticals Inc. v. Lucio Peacock,WIPO Case No. D2018-0802.
The Panel finds that the Respondent has registered and uses the disputed domain name 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 9, 2021