The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“U.S.”), represented by Burns & Levinson LLP, U.S.
The Respondent is Steven Blome, Blome Agency, U.S.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Stefan Naumann 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.
4. Factual BackgroundThe Complainant is a large U.S. insurance provider generally known by the acronym GEICO. The evidence shows that the Complainant owns a number of word trademarks for GEICO, including U.S. registration no. 763,274, registered January 14, 1964, and U.S. registration no. 2,601,179, registered on July 30, 2002, both referencing a first use in commerce in 1948 for services in International Class(es) 35 and 36, and 36, respectively; a European Union Trade Mark no. 1178718, registered on September 4, 2013, for services in International Class 36. The evidence shows that the GEICO brand is well established and that the Complainant uses the acronym GEICO for its website “www.geico.com” and for its various widely followed and viewed social media accounts.
The disputed domain name was registered on April 23, 2019. The evidence shows that the website at the disputed domain name is an inactive or parked website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that its GEICO marks are well-known, that the Respondent has no permission from the Complainant to use the Complainant’s trademarks or apply for a domain name with the Complainant’s trademarks, that the Respondent used the Complainant’s trademarks without rights or legitimate interests in order to intentionally attract Internet users, and that the passive holding constitutes bad faith use that damages the reputation of the Complainant’s brand. Moreover, the Complainant contends that the use of the disputed domain name to host an inactive or parked website does not represent a bona fide offering of goods or services, or a legitimate fair use, and that the Respondent is not commonly known by the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name must have been registered and used in bad faith.
A. Identical or Confusingly SimilarThe disputed domain name combines the GEICO trademark with the term “saintpaul”, separated by a hyphen, and the generic Top-Level Domain (“gTLD “) “.com”. The addition of the term “saintpaul” and of the gTLD does not affect the fact that the disputed domain name incorporates and reproduces the Complainant’s GEICO trademarks. The disputed domain name is confusingly similar to the Complainant’s trademarks since the GEICO trademarks are clearly recognizable in the disputed domain name.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy.
B. Rights or Legitimate InterestsThe disputed domain name carries a clear risk of implied affiliation since consumers would expect to land on a website of the Complainant when typing in the Complainant’s trademark GEICO with a term that could be understood as a geographic indication, particularly since the Complainant also uses the GEICO trademark in its domain name.
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and finds no indication in the evidence that the Respondent could claim rights or legitimate interests of his own in the term “GEICO”. Since the Respondent has no permission from the Complainant and chose not to respond, his use of the disputed domain name is deemed to be without rights or legitimate interests.
The Panel finds that in the present case the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Complainant argues that the Respondent knew, should have known, or exercised willful blindness of the Complainant’s well-known GEICO trademarks, and that the registration of the disputed domain name in the present circumstances allows a finding of bad faith registration and use under the passive holding doctrine.
The Panel notes that the Respondent is domiciled in the U.S. and finds that the Complainant’s ubiquitous use of its GEICO trademarks, notably for car insurance services targeted at the general public in the U.S., makes it unlikely that the Respondent was or could have been unaware of the Complainant’s GEICO trademarks. In addition, the term “GEICO” is an acronym without a common dictionary meaning. These circumstances are sufficient to find bad faith registration. In the present matter, they are also sufficient to find bad faith use based on the passive holding of the disputed domain name.
As discussed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the relevant issue is whether under the circumstances of a case, it can be held that a respondent is acting in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel noted that:
“[…] paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the [Policy] only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
In the present matter, the record shows that:
(i) the Complainant’s GEICO trademarks are well known, as evidenced by their substantial use by the Complainant and the Complainant’s substantial advertising of the brand, notably in the U.S.;
(ii) the disputed domain name reproduces the acronym GEICO, which is not a common or dictionary word, and is confusingly similar to the Complainant’s GEICO trademarks; and
(iii) any website set up by the Respondent using the Complainant’s GEICO trademarks alone or in combination with another term would confuse and mislead Internet users, as does the disputed domain name leading to an inactive page.
In light of these specific circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name in the present matter also satisfies the bad faith use requirement of 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
Stefan Naumann
Sole Panelist
Date: January 21, 2022