Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Edward Jarman, MONSOON BLOCKCHAIN, 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 December 2, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 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 December 3, 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 December 8, 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 December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2021.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 21, 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 BackgroundComplainant states that it is “an internationally well-known insurance provider who has provided its insurance services – including insurance brokerage and underwriting for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats – throughout the United States under the mark ‘GEICO’ since at least 1948”; that it has “over 17 million policies and insures more than 28 million vehicles”; and that it has “over 40,000 employees.”
Complainant states, and provides evidence to support, that it is the owner of multiple trademark registrations that consist of or contain GEICO, including United States Registration No. 763,274 (registered January 14, 1964) (the “GEICO Trademark”).
Complainant states, and provides evidence to support, that the Disputed Domain Name was being used in connection with a website that features pay-per-click (“PPC”) links, including links labeled “Geico Insurance”, “Insurance Agency,” “Auto Insurance Quote,” and “Usaa Insurance Quote.”
5. Parties’ Contentions A. ComplainantComplainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the GEICO Trademark because it “incorporates the distinctive GEICO trademark and is therefore identical or confusingly similar to Complainant’s GEICO trademark regardless of the additional nondistinctive descriptive and/or commonly used term ‘metaverse’ in the domain name.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no evidence that: (i) the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the Disputed Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name”; and “Complainant has not given any authorization for the use of its GEICO trademark in any form, nor does the Respondent offer any legitimate GEICO services on the website to which the Disputed Domain Name resolves.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent’s incorporation of Complainant’s famous, widely-known GEICO trademark into the Disputed Domain Name creates a presumption of bad faith”; use of the Disputed Domain Name in connection with a PPC site “strongly suggests that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from or otherwise exploit the Complainant’s GEICO trademark”; and Respondent failed to respond to a demand sent by Complainant via email on November 5, 2021.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly SimilarBased upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GEICO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the GEICO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “geicometaverse”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the GEICO Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate InterestsComplainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no evidence that: (i) the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the Disputed Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name”; and “Complainant has not given any authorization for the use of its GEICO trademark in any form, nor does the Respondent offer any legitimate GEICO services on the website to which the Disputed Domain Name resolves.”
WIPO Overview 3.0, section 2.1, states: “[w]hile 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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithWhether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the Disputed Domain Name is associated with a monetized parking page that contains links for goods or services competing with the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Further, Respondent’s failure to respond to Complainant’s demand is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini,WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
Accordingly, the Panel finds that Complainant has proven the third element 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
Douglas M. Isenberg
Sole Panelist
Date: February 2, 2022