The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Protection Domain, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 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 27, 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 27, 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 21, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on September 27, 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.
The Domain Name was registered on June 8, 2011 and, as at the drafting of this Decision, resolved to a parked page displaying pay-per-click (“PPC”) advertisements for 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.
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 it was registered and used in bad faith given that it takes advantage of the Complainant’s well-known mark to divert consumers to third party services, some of them competitive with the Complainant, for the Respondent’s commercial benefit, and is offered for sale in excess of the Respondent’s out-of-pocket costs.
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 first element of the Domain Name and the remainder, apart from the generic Top-Level Domain, consists of the terms “insurance” and “rates” which do not prevent a finding of confusing similarity under the first element. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThere is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy, nor any others that would confer rights or legitimate interests, pertain.
UDRP Panels have found that use of a domain name to host PPC links does not represent a bona fide offering 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 redirect users to a website offering third party antivirus software for sale does not confer rights or legitimate interests on the Respondent (WIPO Overview 3.0 at section 2.5.3). The Domain Name bears no ordinary meaning or significance relevant to the third party antivirus vendor, nor software of that genus generally, and thus could not have been adopted in good faith for its semantic value. The Complainant’s mark is highly specific to the Complainant and thus the choice of the Domain Name seems entirely incongruous with the content of the websites to which is has resolved, strongly indicating that the Domain Name was adopted with the Complainant in mind (Boursorama S.A. v. Pencreach Jacques,WIPO Case No. D2021-1195).
The only other use of the Domain Name is its advertisement for sale. Trading domain names can constitute a bona fide offering provided it is not undertaken with intent to profit from or abuse trade marks (X6D Limited v. Telepathy, Inc.,WIPO Case No. D2010-1519). The composition of the Domain Name, consisting of the Complainant’s mark and terms descriptive of the Complainant’s services, in this Panel’s view carries a “risk of implied affiliation” that does not constitute fair use, since it “effectively impersonates or suggests sponsorship or endorsement” by the Complainant. WIPO Overview 3.0 at section 2.5.1.
For the reasons detailed above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe 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). Similarly, the Domain Name has also been used to redirect users to unaffiliated third party websites, advertising antivirus software, further supporting an inference that the Respondent has intentionally sought to mislead Internet users by means of the confusingly similar Domain Name.
Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0 at section 3.1.4.
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 with a minimum offer of USD 500, which is likely 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 applicable.
The Respondent failed to respond to the Complainant’s cease and desist correspondence and the Complaint. Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0).
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 8, 2021