Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Registration Private, Domains by Proxy, LLC, United States / Alan Auerbach, Digital Office Concepts, United States, represented by Berkman Law Office, LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 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 to Complainant on October 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 25, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfy 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 Respondent of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. On October 25, 2021, Respondent submitted an informal communication to the Center. On December 10, 2021, Respondent informed the Center about his legal representation. On December 10, 2021, the Center informed the Parties of the commencement of the Panel appointment procedure.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 7, 2022. 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.
Respondent notified the Center and asserted that he had not in fact received the Complaint and annexes, and requested an opportunity to respond. The Panel issued Procedural Order Nos. 1 and 2 on January 14 and 21, 2022, allowing Respondent until February 18, 2022 to submit a Response to the Complaint. Respondent did not submit any Response by the extended deadline.
4. Factual BackgroundComplainant, a major personal lines insurer in the United States, has offered its insurance services under the trademark GEICO since 1948. Complainant holds various registrations for the GEICO trademark, including United States Patent and Trademark Office Reg. No. 763,274 (registration date January 14, 1964).
Complainant cites several UDRP decisions in support of its contention that GEICO has become a famous trademark, including, for example, Government Employees Insurance Company v. Joel Rosenzweig, RegC,WIPO Case No. D2021-1221. Complainant has more than 17 million insurance policies, and insures more than 28 million vehicles. Complainant operates a commercial website at the domain name
The Domain Name was registered on April 29, 2005. The Domain Name resolves to a parking page containing various hyperlinks, including “By [sic] Car Insurance”, “Insurance Seller”, “Des Jardin Car Insurance”, and “Auto Insurance Broker Companies”. The parking page also features a hyperlink entitled “Get This Domain”. Complainant alleges that Respondent probably derives pay-per-click (“PPC”) revenue from these hyperlinks. Respondent has not disputed this contention.
On September 15, 2021, Complainant sent Respondent an email demanding that Respondent cease his use of the GEICO mark and that Respondent transfer the Domain Name to Complainant. Respondent did not reply to this cease-and-desist missive.
There is no evidence in the record of any past or current relationship between the Parties.
5. Parties’ Contentions A. ComplainantComplainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentDespite seeking and receiving an extended deadline within which to file a Response to the Complaint, Respondent has not done so. As such, Complainant’s allegations are undisputed in this proceeding.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the famous trademark GEICO, through registration and use demonstrated in the record. The Panel finds the Domain Name to be confusingly similar to the GEICO mark. The mark is entirely reproduced in the Domain Name, and the additional word “agency” does not prevent a finding of the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not come forward to articulate or prove any bona fide reason for registering the Domain Name. There is no evidence in this record that Respondent was given any authority from Complainant to register the Domain Name. It appears that the only use to which the Domain Name has been put is to host a parking page with PPC hyperlinks related to the insurance business, in which area of commerce Complainant is a major player and in which GEICO figures as a leading trademark. Such conduct cannot qualify as vesting Respondent with a legitimate interest vis-à-vis the Domain Name under these circumstances.
Furthermore, the Panel notes that the nature of the Domain Name, comprising the famous GEICO mark and the word “agency” (which is often associated with insurance companies, as many consumers procure their insurance through an agency), carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. It is obvious that Respondent had Complainant’s famous GEICO trademark in mind when registering the Domain Name. If the fame of the mark were not enough to yield this conclusion, then Respondent’s actual use of his website, to feature PPC hyperlinks related to the field of commerce in which Complainant famously operates, eliminates all doubt about Respondent’s targeting of Complainant’s mark.
As respects bad faith use, the undisputed record here indicates that Respondent is using the Domain Name for commercial gain by deriving PPC revenue, which conduct constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
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
Robert A. Badgley
Sole Panelist
Date: February 21, 2022