The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Aiden & Pierre Co. 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 22, 2021. On October 25, 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 the Complainant on October 26, 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 October 26, 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 the Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. On October 28, 2021, the Center received an email communication from the Respondent indicating the disputed domain name is listed for sale. On November 18, 2021, the Center informed the Parties that it would proceed with the panel appointment.
The Center appointed Joseph Simone as the sole panelist in this matter on November 25, 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, Government Employees Insurance Company, is an internationally well-known insurance company that provides insurance brokerage and underwriting services under the mark GEICO.
The Complainant has an extensive global portfolio of trade marks incorporating the term “Geico”, including the following:
- United States Trade Mark Registration No. 0763274 in Classes 35 and 36, registered on January 14, 1964;
- United States Trade Mark Registration No. 2601179 in Class 36, registered on July 30, 2002;
- European Union Trade Mark Registration No. 1178718 in Class 36, registered on September 4, 2013; and
- International Trade Mark Registration No. 1178718 in Class 36, registered on September 4, 2013.
The Complainant operates a website promoting its business linked to the domain name
The disputed domain name was registered on September 29, 2021. According to screenshots provided by the Complainant, at the time of filing the Complaint, the disputed domain name resolved to a pay-per-click (“PPC”) parking website. At the time of this Decision, the disputed domain name continued to do so.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that it has prior rights in the GEICO trade mark and that it is a leading player in its field of business.
The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s GEICO trade mark, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis as to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.
The Complainant asserts that it has not authorized the Respondent to use the GEICO mark, and there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Finally, the Complainant points out that there is neither evidence suggesting that the Respondent has any connection to the GEICO mark in any way, nor any plausible good faith reason for the Respondent to have registered the disputed domain name, given the relevant circumstances.
The Complainant therefore concludes that the registration and any use of the disputed domain name whatsoever must be in bad faith.
B. RespondentThe Respondent sent an email communication to the Center on October 28, 2021, simply noting that the disputed domain name was advertised for sale, but offering no arguments to counter the Complainant’s assertions.
6. Discussion and FindingsThe Panel first notes this is a case where the Respondent initially registered the disputed domain name through a privacy or proxy service (“Registration Private, Domains By Proxy, LLC”).
As such, the Panel adopts the approach of most UDRP panels to determine the appropriate Respondent against which the present case should proceed, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In this case, the Panel considers the substantive Respondent to be Aiden & Pierre Co. LLC, and refers to that entity as the Respondent.
A. Identical or Confusingly SimilarThe Panel acknowledges that the Complainant has established rights in the GEICO trade mark in many jurisdictions around the world.
Disregarding the “.com” gTLD, the disputed domain name incorporates the GEICO trade mark in its entirety. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s GEICO trade mark. The additional term “claims center” does not prevent a finding of confusing similarity. Rather, “claims center” is a common term used in the insurance industry that clearly targets the Complainant’s field of business.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the GEICO trade mark and in showing that the disputed domain name is identical or confusingly similar to its mark.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant asserts that it has not authorized the Respondent to use its trade mark and, and that there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolves to a PPC website displaying third party links, some of which offer services that compete with those of the Complainant.
Thus, the Complainant has established its prima facie case with satisfactory evidence.
The Respondent did not file a substantial Response rebutting the above and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy are applicable in this case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraphs 4(b)(i) and (iv) of the Policy.
When the Respondent registered the disputed domain name on September 29, 2021, the GEICO trade mark was already widely known and directly associated with the Complainant’s activities. Given the extensive prior use and fame of the GEICO mark, in the Panel’s view, the Respondent should have been aware of the Complainant’s mark when registering the disputed domain name.
The Complainant’s registered trade mark rights in GEICO for its products and services predate the registration date of the disputed domain name by approximately six decades. A simple online search (e.g., via Google or Baidu) for the term “Geico” would have revealed that it is a world-renowned brand. The Respondent has provided no evidence to justify its registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive trade mark GEICO was a mere coincidence.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trade mark rights. This conclusion is further supported by the fact that the Respondent included in the disputed domain name a common term used in the Complainant’s business industry – “claims center”.
The Respondent has used the disputed domain name to resolve to a PPC website with links targeting the Complainant’s insurance services, presumably profiting from Internet users misdirected due to the nature of the disputed domain name.
Further, via an email sent to the Center, the Respondent admitted to listing the disputed domain name for sale.
Accordingly, the Panel finds that the Respondent has registered the disputed domain name with the intention of taking advantage of the fame and reputation of the Complainant’s trade mark for the commercial benefit of the Respondent, and that the Respondent has also openly offered to sell the disputed domain name.
Based on the foregoing, the Panel finds that the disputed domain name was 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,
Joseph Simone
Sole Panelist
Date: December 8, 2021