The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domains By Proxy - VSC Proxy Account, Virtual Services Corporation, Switzerland.
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 27, 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 October 1, 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 October 1, 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 October 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on December 6, 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 BackgroundAccording to the Complainant’s undisputed allegations, the Complainant is an insurance company who has provided insurance services throughout the United States under the mark GEICO since at least 1948 and has over 40,000 employees. Furthermore, the Complainant has over 17 million policies and insures more than 28 million vehicles.
The disputed domain name was registered by the Respondent on December 18, 2005. The language of the registration agreement at the time of registration was English.
The Complaint is based, amongst others, on the following word trademarks for the term GEICO, applied for before the date of registration of the disputed domain name,
- United States trademark No. 0763274, registered on January 14, 1964, for services in Class 35, and 36;
- United States trademark No. 2601179, registered on July 30, 2002, for services in class 36.
According to the Complainant’s undisputed further allegations, the disputed domain name currently resolves to a website that displaying auto-generated pay-per-click (“PPC”) links to websites operated by third parties, including direct competitors.
On September 7, 2021, the Complainant contacted the Respondent, requesting the Respondent to cease its infringing use of the GEICO trademark and transfer the disputed domain name. The Complainant did not receive any response to this request.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant points out that the disputed domain name is identical to the registered trademark GEICO in which the Complainant has rights. In fact, the disputed domain name contains the trademark GEICO identically followed by the descriptive or generic term “claims”.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner. Additionally, there is no evidence (i) of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent is commonly known by the disputed domain name; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. The Complainant submits that the Respondent, at the time of registration of the disputed domain name, was well aware of the existence of the Complainant’s trademarks since GEICO is one of the most recognizable insurance brands. Furthermore, the Complainant is of the opinion that the Respondent has been using the disputed domain name for redirection purposes in order to generate PPC revenues for the Respondent and to unfairly profit from the Complainant’s reputation, all in bad faith. The Respondent’s lack of response to the Complainant’s demand letter, and continuation of its bad faith use of the disputed domain name despite receiving the demand letter further evidences the Respondent’s bad faith. Finally, Registrant’s use of another privacy service in the underlying registrant information as part of a “Russian doll” scenario meant to provide multiple layers of identification obfuscation supports an inference by this Panel of Respondent’s bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element GEICO, amongst others United States trademark registrations No. 0763274, registered on January 14, 1964, and No. 2601179, registered on July 30, 2002. These trademarks significantly predate the creation date of the disputed domain name, which is December 18, 2005.
Previous UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070). This Panel shares this view and notes that the Complainant’s registered trademark GEICO is fully included in the disputed domain name.
It is the view of this Panel that the combination of the trademark GEICO with the term “claims” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. The Panel therefore shares the view expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, according to which “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks GEICO, e.g., by registering the disputed domain name comprising said trademark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
In addition, it results from the Complainant’s undisputed allegations that the disputed domain name resolves to a website featuring PPC advertisement links. In the Panel’s view such commercial use cannot – from the outset – be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy.
Finally, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In fact, this Panel shares the view of previous panels holding that the use of a domain name to host a parking page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0).
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the Panel’s view, the Respondent has intentionally registered the disputed domain name which contains the Complainant’s trademark GEICO plus a term (“claims”) which is applicable to the Complainant’s activity. By the time the disputed domain name was registered, it is therefore unlikely that the Respondent did not have knowledge of the Complainant and its mark GEICO and its business activity.
The Complainant also provided evidence that the Respondent is using the disputed domain name to lead to a website featuring PPC-advertisement links. This is indicative of bad faith, even if the webpage is configured automatically by the registrar or any other party. Indeed, particularly with respect to “automatically” generated PPC-links, previous UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith (see section 3.5 of WIPO Overview 3.0).
These facts confirm that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:
- the Respondent uses a privacy service to hide its identity;
- the Respondent did not react on a communication sent by the Complainant to the email address indicated in the WhoIs before starting the present UDRP proceedings; and
- the Respondent did not provide any formal response to the Complainant’s contentions with conceivable explanation of its behavior so that no legitimate use of the disputed domain name by the Respondent is actually conceivable for the Panel.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 disputed domain name,
Tobias Malte Müller
Sole Panelist
Date: December 20, 2021