The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Virendra Singh, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 September 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 amendment to the Complaint on September 28, 2021.
The Center verified that the Complaint together with the amendment to 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 October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Response was filed with the Center on October 3, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on November 3, 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 has provided insurance services in the United States under the mark GEICO since at least 1948. The Complainant operates over 17 million insurance policies and insures more than 28 million vehicles.
The Complainant operates its main website at “www.geico.com”.
The Complainant owns a number of registered trade marks GEICO including United States trade mark No. 0763274, filed December 6, 1962, registered January 14, 1964, in United States class 102.
The disputed domain name shows a creation date of August 15, 2012.
On September 2, 2021, the Complainant sent a demand email to the Respondent using an email address at “infinityrelief.org”.
As of September 21, 2021, the disputed domain name resolved to a website for “Infinity Foundation”, described as an Indian non-governmental organisation that worked with disadvantaged children and families.
A WhoIs printout dated September 21, 2021, stated that the disputed domain name was for sale on a partner website for “$25,000”.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The Complainant’s world-famous trade mark has become uniquely associated with the Complainant as a result of the Complainant’s extensive use and promotional activities, including the garnering of millions of social media followers.
The disputed domain name is confusingly similar to the Complainant’s trade mark, which is recognisable within the disputed domain name. The addition of the dictionary word “squad” does not prevent a finding of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence of use, or demonstrable preparations for use, of the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use thereof.
The Complainant has not authorised the Respondent to use its trade mark. Nor does the Respondent offer any legitimate services relating to the Complainant’s services. Accordingly, the Respondent cannot legitimise its incorporation of the Complainant’s highly distinctive and famous trade mark into the disputed domain name.
Even if the Respondent operates as a non-profit or non-governmental organisation, its status as such does not provide a defence.
The disputed domain name was registered and is being used in bad faith.
The Respondent’s incorporation of the Complainant’s world-famous trade mark into the disputed domain name creates a presumption of bad faith.
The fact that the disputed domain name is advertised for sale at “$25,000” strongly suggests that the Respondent intentionally registered the disputed domain name in bad faith for financial gain, with knowledge of the Complainant’s trade mark and business.
The Respondent’s use of the disputed domain name wholly incorporating the Complainant’s famous trade mark to promote the Respondent’s own services, unrelated to those of the Complainant, is further evidence of bad faith, as is the Respondent’s lack of response to the Complainant’s demand letter and the Respondent’s continuing use of the disputed domain name thereafter.
There is no conceivable use of the disputed domain name that would not infringe the rights of the Complainant.
B. RespondentThe following is a summary of the Respondent’s contentions.
The Respondent is “around 80 years old” and bought the disputed domain name for his computer hardware business on the suggestion of his granddaughter.
Search engines show that “Geico” means “lizard”.
The Complainant did not contact the Respondent before it emailed him following the filing of the Complaint “even I asked them to buy this domain but they didn’t shown any interest in that”.
Only now does the Respondent realise that GEICO refers to an insurance company in the United States.
The disputed domain name means “Lizard TEAM” and was registered for a computer hardware business located in India, none of which has nothing to do with the United States or any insurance company.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Preliminary - Informal ResponseThe Response is in the form of an email to the Center, which does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
B. Identical or Confusingly SimilarThe Complainant has established rights in the mark GEICO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and longstanding use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “squad” does not prevent a finding of confusing similarity.
For the above reasons, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used as a website for “Infinity Foundation”, which is described as an Indian non-governmental organisation. However, the Respondent does not rely on such use in his Response, or even mention it. The Panel therefore infers that the Respondent has no connection with this organisation and that, most likely, he resolved the disputed domain name to this website as some sort of defensive move rather than for any legitimate purpose. The Panel does not consider that these circumstances constitute a bona fide offering of goods or services.
The Respondent claims that he registered the disputed domain name for his computer hardware business in India but he has not provided any evidence of use of the disputed domain name for such a business.
If the Respondent is relying on future plans, section 2.2 of WIPO Overview 3.0 explains that clear contemporaneous evidence of bona fide pre-complaint preparations is required. While, depending on the circumstances, such evidence may not need to be particularly extensive, it must go beyond a mere statement of a claimed intention. Here, the Respondent has provided no evidence at all as to any intended use of the disputed domain name for a computer hardware business.
Accordingly, the Panel considers that the Respondent has failed to establish a bona fide offering of goods or services, or demonstrable preparations for such an offering, in accordance with paragraph 4(c)(i) of the Policy.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad FaithThe Respondent denies that he was aware of the Complainant when he registered the disputed domain name on the basis that he and his business are located in India.
However, section 3.2.2 of WIPO Overview 3.0 states that, particularly given the Internet’s borderless nature, a sweeping respondent disclaimer of knowledge based as such on its (deemed) presence in a particular location different from the locations in which the complainant’s goods or services are accessible may be seen by panels as lacking in credibility or relevance. Section 3.2.2 notes that the business of cybersquatting often seeks to exploit the global reach of the Internet and may in fact purposefully target a location other than that in which the respondent may be “present”.
The Panel further notes the following:
1. The Complainant has been trading for many years and has acquired a substantial reputation in its distinctive name and mark.
2. The Respondent has provided no evidence in support of any his assertions, including that he registered the disputed domain name for an existing or intended computer hardware business. Nor has the Respondent explained clearly why he selected a domain name combining the terms “geico” and “squad” for this alleged business, beyond attributing it to a suggestion from his granddaughter.
3. The Respondent’s (unsupported) assertion that search engines show that “geico” means “lizard” appears defensive, particularly in the absence of any suggestion, let alone evidence, that the Respondent registered the disputed domain name in relation to such alleged meaning of “geico”.
4. The Respondent makes no mention of the use of the disputed domain name for a website in connection with an Indian non-governmental organisation despite the Complaint referring to, and questioning, such use. As mentioned in section 6C above, the Panel infers from this omission that, most likely, the Respondent has no connection with this organisation and has simply used the disputed domain name in this manner to try and justify the Respondent’s (illicit) holding of the disputed domain name rather than for any legitimate purpose.
For all of the above reasons, the Panel does not find the Respondent’s denial of knowledge of the Complainant to be credible and concludes that, on the balance of probabilities, the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Panel considers that the Complainant has established the third element of paragraph 4(a) 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,
Adam Taylor
Sole Panelist
Date: November 17, 2021