Complainant is Government Employees Insurance Company, United States of America, represented by Burns & Levinson LLP, United States of America.
Respondent is James Schwehr, Affinity Luxury Car Rentals, Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 Complainant on October 25, 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 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 Respondent of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2021.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on November 24, 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 BackgroundComplainant is an internationally well-known insurance provider who has provided its insurance services throughout the United States under the mark “GEICO” since at least 1948.
Complainant has over 17 million policies and insures more than 28 million vehicles and it has over 40,000 employees.
Complainant is the owner of several trademark registrations consisting of the word “GEICO”, which have been registered in numerous countries all over the world. Amongst others, US trademark registration GEICO, No. 0763274, registered on January 14, 1964.
Complainant is the registrant of the domain name
This disputed domain name
Complainant argues that the disputed domain name is identical and/or confusingly similar to its GEICO trademarks, due to the fact that the relevant trademark is recognizable within the disputed domain name regardless of the addiction of the generic terms “car” and “rentals”.
Moreover, even if the added words “car” and “rentals” are generic words, in this case, could be associated to the services offered by Complainant and therefore users can be confused (CBS Broadcasting Inc. v. US address,WIPO Case No. D2010-0322).
Thus, the use of the words “car” and “rentals” determine an obvious association with Complainant’s trademark and does not dispel the likelihood of confusion.
Complainant requests that the disputed domain name be transferred to Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
A. Identical or Confusingly SimilarIn the present case, the disputed domain name incorporates the word “geico”, which is identical to Complainant’s registered well-known trademark GEICO.
It is clear that the disputed domain name incorporates in its entirety the GEICO trademark to which the generic terms “car” and “rentals” have been added.
Therefore, the disputed domain name reproduces the term “geico” in its entirety, and combines it with the terms “car” and “rentals”. It is also established that the addition of generic terms (such as here the words “car” and “rentals”) may not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189). See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “[w]here 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. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Accordingly, the Panel considers that the disputed domain name may be considered identical or confusingly similar to the trademark for the purpose of the Policy (See Four Seasons Hotels Limited v. Daniel Kirchhof / Unister GmbH,WIPO Case No. D2011‑0948; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).
The Panel finds the first element of the Policy has, therefore, been met.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), Complainant has to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
Complainant has presented a prima facie case and argues that Respondent has not provided any evidence demonstrating that Respondent might be commonly known by the disputed domain name, or that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Panel finds that Respondent cannot claim that it is unaware of Complainant’s marks, as it utilizes such without a disclaimer on the website that the disputed domain name is for a commercial purpose, which is not bona fide use.
The Panel concludes, also noting the Panel’s below findings, that Respondent lacks any rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has, therefore, been met.
C. Registered and Used in Bad FaithRespondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them trying to attract them to other websites, and making them believe that the websites behind those links are associated or recommended by Complainant.
Complainant has shown that the links listed on Respondent’s website to which the disputed domain name resolves also displays links which appear to promote services of possible competitors of Complainant, and lead to additional pay-per-click linking portals that display links to third-party websites.
On the basis of the above, the Panel finds that Respondent registered the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s trademarks and domain names (Policy, paragraph 4(b)(iii)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by Respondent.
On this basis the Panel finds that Complainant has satisfied the third and last point of the Policy, paragraph 4a(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 disputed domain name,
Eva Fiammenghi
Sole Panelist
Date: December 7, 2021