The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“U.S.”), represented by Burns & Levinson LLP, United States of America.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland, / Roksana Beims, Ukraine.
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 27, 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 September 28, 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 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 1, 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 incorporated in the United States, and the owner of the GEICO trademark.
The Complainant owns, amongst others, the following trademark registrations:
- The U.S. trademark GEICO with registration No. 0763274 filed on December 6, 1962, and registered on January 4, 1964, covering “Insurance underwriting and related services – namely, automobile collision, comprehensive and liability insurance; overseas insurance; automobile and mobile home and boat financing; fire and home owners’ insurance; life hospitalization, sickness and accident insurance” in U.S. Class 102;
- The International registration of the trademark GEICO designating the European Union with registration No. 1178718 registered on September 4, 2013, covering “Providing insurance brokerage and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods and boats; providing insurance brokerage and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods and boats via a global communications network” in International Class 36.
The Complainant has established a website at “www.geico.com”, registered on July 21, 1995, and used to promote and sell its insurance services. According to the information provided on that website (Annex 1 of the Complaint), the Complainant has currently 17 million auto policies in force and insures more than 28 million vehicles. The Complaint also sells other types of insurance products.
The Complainant maintains various social media accounts under the trademark GEICO, amongst which Facebook, Twitter and Instagram.
The disputed domain name
Currently, the disputed domain name is inactive.
5. Parties’ Contentions A. ComplainantOn the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the dominant part of the disputed domain name comprises the distinctive trademark GEICO.
The Complainant maintains that the similarity is altered neither by the descriptive or generic term “quotes”, nor by the addition of the generic Top-Level Domain (“gTLD”) “.com”, which is viewed as a standard registration requirement and is irrelevant to determine the confusing similarity.
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent has not been authorized to use its trademark and that nothing indicates that the Respondent has been using GEICO in any way that would provide rights or legitimate interests in this name. The Complainant further asserts that the Respondent was not and is not using the disputed domain names in connection with a bona fide offering of goods or services.
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the incorporation of the well-known trademark into a domain name is an indication of bad faith and that the Respondent could not have ignored the prior rights of the Complainant in that trademark.
The Complainant argues that by registering the disputed domain name, the Respondent attempted to free ride on the reputation and the goodwill of the Complainant and its trademark GEICO, by misleading and attracting Internet users to the Respondent’s website to promote its own services.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark.
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to GEICO, which precede by several decades the disputed domain name.
Secondly, this Panel finds that the disputed domain name is confusingly similar to the earlier GEICO trademarks, for the following reasons:
- the disputed domain name incorporates the entirety of the GEICO trademark. On that basis, it shall be considered confusingly similar to that trademark for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Qutestions, Third Edition (“WIPO Overview 3.0”));
- the addition of the term “quotes” does not avoid a finding of confusing similarity. The addition of another term does not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0); and
- the relevant comparison is made between the second level portion of the disputed domain name and the Complainant’s trademark (see Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bank Nagelmackers N.V. v. WhoisGuard, Inc / Paulo Giardini,WIPO Case No. D2016-0819). The gTLD (here “.com”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s GEICO trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is a well-established view of past UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (see Aguas de Cabreiroa, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; and HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
This Panel retains notably the following considerations:
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- the Respondent has not been granted a license or authorization of any kind by the Complainant (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055) and has never had a business relationship with the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312);
- the disputed domain name consists of the GEICO trademark in its entirety, along with the descriptive term “quotes” that is associated with the Complainant’s services of providing insurance “quotes”, and as such creates a risk of implied affiliation, which suggests sponsorship or ownership on part of the Complainant, which is not accurate and thus cannot be considered fair use.
- the Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name. The attempt to attract customers looking for the services of the Complainant to the Respondent’s website for commercial gain constitutes an illegitimate use. This Panel agrees with the Complainant on the fact that the disclaimer inserted on the website does not alter this finding. On the contrary, the inserted disclaimer adds to the confusion created by the Respondent; and
- the Respondent currently passively holds the disputed domain name; this also constitutes an indication of the absence of legitimate interests under the circumstances (see Washington Mutual, Inc. v. Ashley Khong,WIPO Case No. D2005-0740).
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted 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.”
Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.
A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademark(s) prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name several decades after the Complainant started using and registered the GEICO trademark.
As the Complainant rightly states, the awareness of the trademark GEICO is considered to be significant and substantial (see Government Employees Insurance Company (“GEICO”) v. 尹 军 (yinjun),WIPO Case No. D2020-3332; and Government Employees Insurance Company v. Joel Rosenzweig, RegC;WIPO Case No. D2021-1221). In those circumstances, it is very unlikely that the Respondent was unaware that the registration of the disputed domain name would violate the Complainant’s rights. Previous UDRP panels have in fact 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 (see section 3.1.4 of the WIPO Overview 3.0).
It is very likely that the Respondent attempted to capitalize on the goodwill attached to the GEICO trademark. The fact that the disputed domain name pointed to a website featuring information about insurance services and referencing the Complainant’s website “www.geico.com” in its footer, further demonstrates that the Respondent was well aware of the Complainant and its trademark GEICO and that he registered the disputed domain name with the intent to create the impression of an association with the Complainant, in bad faith. The website has since then been shut down by the Respondent, which does further support the finding of bad faith.
In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain name is registered and used in bad faith.
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
Benoit Van Asbroeck
Sole Panelist
Date: November 15, 2021