The Complainant is Government Employees Insurance Company, United States of America (“United States” or “US”), represented by Burns & Levinson LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
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 Disputed Domain Name. On October 21, 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 22, 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 26, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Jane Lambert as the sole panelist in this matter on November 29, 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 the second largest insurer of private motorists in the United States. It has issued over 17 million policies covering more than 28 million vehicles. It also offers home, tenants’ contents, travel, boat and other insurance. The Complainant has traded under the GEICO mark since 1948 if not earlier. It advertises its services over its interactive website at “www.geico.com” and through social media.
It applied to the US Patent and Trademark Office to register GEICO as a service mark for various insurance related services on December 6, 1962. Its application was granted on January 14, 1964. The mark is registered under registration number 763,274. A copy of the registration certificate for that mark together with copies of registration certificates for other countries is annexed to the Complaint as Annex 3.
When the Disputed Domain Name is keyed into a browser, it resolves through redirection to a number of rotating websites examples of which are annexed to the Complaint.
5. Parties’ Contentions A. ComplainantThe Complainant asks for the Disputed Domain Name to be transferred to it on the grounds that:
- The Disputed Domain Name is confusingly similar to a service mark in which it has rights;
- The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
- The Disputed Domain Name was registered and is used in bad faith.
As for the first ground, the Complainant says that the Disputed Domain Name incorporates the GEICO mark in its entirety with the addition of the letters “ico” and the suffix “.com”. Referring to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0) and Government Employees Insurance Company v. Jerome Crawford,WIPO Case No. D2019-0112 (April 7, 2019) and cases cited therein, the Complainant contends that its US trade mark registrations establish its trade mark rights under the first elementof the paragraph 4(a) of the Policy. Previous panels have consistently held that disputed domain names are confusingly similar to trade marks when the relevant trade mark is recognizable within the disputed domain name regardless of the addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise.
Turning to the second ground, the Complainant alleges that there is no evidence that the Respondent has any legitimate claims to the Disputed Domain Name. It submits that any current or conceivable future use of the Disputed Domain Name would violate the Policy. It confirms that it has not authorized Respondent’s use of the GEICO trade mark or the registration of the Disputed Domain Name.
In respect of the third ground, the Complainant submits that bad faith can be inferred from the Respondent’s failure to respond to the Complainant’s letter before filing of the Complaint. The incorporation of a well-known trade mark into a domain name creates a presumption of bad faith. The Respondent’s use of the Disputed Domain Name is likely to attract Internet users to one of the websites mentioned above “in order to reap undeserved affiliate commissions to unfairly profit from the Complainant’s reputation.” The Complainant alleges that the Respondent has a history of abusively registering and using domain names incorporating third-party trade marks which have given rise to findings of bad faith and cites Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0501 (April 15, 2020), ZipRecruiter Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0307 (April 2, 2020) and Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0071 (February 28, 2020) in support of its allegation.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe agreement for the registration of the Disputed Domain Name incorporated the following provision of the Policy:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly SimilarThe Panel holds that the first element is present.
The Complainant is the registered proprietor of US service mark number 763,274 for GEICO. The Disputed Domain Name may not be identical to that registered mark but since the GEICO mark is recognizable in the Disputed Domain Name, it is certainly confusingly similar. The additional characters would be overlooked by many Internet users but others might reason that the “i” stands for “insurance” or “information”, that the “co” stands for company or that the “c” stands for “company” or “central” and the “o” for “office”. On any view, the additional letters do not prevent a finding of confusing similarity under the first element, section 1.8 of the WIPO Overview 3.0.
B. Rights or Legitimate InterestsThe Panel holds that the second element is present.
The second paragraph of section 2.1 of the WIPO Overview 3.0 offers the following guidance:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy lists a number of circumstances which if found by the Panel to be proved based on its evaluation of all evidence presented could demonstrate that a respondent has rights or legitimate interests in a disputed domain name for purposes of paragraph 4(a)(ii). There is nothing to suggest that any of those circumstances applies here. The Complainant has registered GEICO as a trade or service mark around the world as well as in the US. Further or alternatively, its reputation and goodwill in that mark in relation to insurance would enable it to bring proceedings for passing off anywhere in the world. It follows that the Disputed Domain Name could not lawfully be registered or used without the Complainant‘s licence. The Complainant has made clear that it has never granted such licence expressly or impliedly.
The Complainant has therefore made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. It follows that the burden of production on this element has shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent has had ample opportunity to produce such evidence and has failed to do so.
C. Registered and Used in Bad FaithThe Panel holds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his or her web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on that web site or location.
The Respondent has used the Disputed Domain Name for a universal resource locator which resolves to various websites that are likely to make click through payments. The Panel has already found the Disputed Domain Name to be confusingly similar to the Complainant’s service mark. Internet users wishing to use the Complainant’s interactive site or to ascertain information about the Complainant are likely to be attracted to those websites by the confusing similarity of the Disputed Domain Name to the Complainant’s mark.
That is enough for a finding of registration and use in bad faith for the purpose of paragraph 4(a)(iii) of the Policy. Failing to respond to the Complainant’s letter before filing of the Complaint and registering well-known marks as a domain name without any rights or legitimate interests in those marks fortify such finding.
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,
Jane Lambert
Sole Panelist
Date: December 13, 2021