Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Contact Privacy Inc. Customer 1247344212, Canada / Nicholas Velonis, 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 3, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 14, 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 January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. On January 25 and 26, 2022, the Center received emails from the Respondent to extend the Response due date. Pursuant to paragraph 5(b) of the Rules, on January 27, 2022, the Response due date was extended until January 31, 2022. The Respondent sent additional emails on January 27, 2022. Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on February 1, 2022.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 15, 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 is an international 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. Furthermore, Complainant holds the following United States trademark registrations: registrations nos. 763,274 (registered on January 14, 1964) and 2,601,179 (registered on July 30, 2002), for the GEICO Mark (or the “Mark”).
Complainant has extensively used and promoted itself and its services, for example, it has issued over 17 million policies and insures more than 28 million vehicles. Complainant has over 40,000 employees, and is one of the fastest-growing auto insurers in the United States.
Complainant maintains various social media accounts under the GEICO Mark, each of which garner tens of thousands, and in some cases millions, of followers.
Complainant has established a website located at “www.geico.com”, which it uses to promote and sell its insurance services under the GEICO Mark. The website enables the public to: access information regarding Complainant’s insurance services, manage their policies and claims, learn more about Complainant, and obtain insurance quotes.
The Domain Name was registered on May 29, 2020. It recently and currently resolves to a website having a header showing the Domain Name,
On November 2, 2021, Complainant wrote to Respondent, among other things, informing it of Complainant’s rights in the GEICO Mark, and demanding to immediately refrain from using any GEICO marks and transfer the Domain Name to Complainant. Complainant did not receive any response.
5. Parties’ Contentions A. ComplainantThe aforementioned trademark registrations satisfy the threshold requirement that Complainant has rights in the GEICO Mark. The Domain Name incorporates the GEICO Mark and is therefore identical or confusingly similar to the Mark regardless of the additional non-distinctive suffix “fy”. The generic Top-Level Domain (“gTLD”) “.com” in the Domain Name is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test.
Complainant has not authorized Respondent to use the GEICO Mark in any form, nor does Respondent offer any legitimate GEICO services on the website to which the Domain Name resolves. Under these circumstances, Respondent’s use of the Domain Name to host a parked page comprising PPC links is not a bona fide offering of goods or services, particularly where, as here, such links compete with Complainant’s business, capitalize on the reputation and goodwill of the Mark and otherwise mislead Internet users.
The GEICO Mark is one of the most recognizable insurance brands in the United States and indeed, is known throughout the world. Thus, Respondent’s incorporation of the Mark in the Domain Name creates a presumption of bad faith. Furthermore, Respondent’s use of the Domain Name to reap undeserved PPC fees by directing website visitors to third party websites, including those of Complainant’s competitors, strongly suggests that Respondent’s intent in registering the Domain Name was to profit in some fashion from or otherwise exploit the GEICO Mark. Furthermore, Respondent’s lack of response to Complainant’s demand letter, and continuation of its bad faith use of the Domain Name despite receiving the demand letter further evidences Respondent’s bad faith registration and use of the Domain Name.
B. RespondentRespondent sent several email communications to the Center on January 25, January 26, and January 27, 2022, asking to be sent the original Complaint and to be given an extension to respond. Further to Section 3 above, the Respondent was granted an extension and forwarded the original Complaint. Respondent did not submit a formal response.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the GEICO Mark by virtue of the aforementioned United States trademark registrations for the Mark.
The Domain Name
WIPO Case No. D2006-1082. The addition of “fy” does not prevent a finding of confusing similarity. See section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, adding the gTLD “.com” after the Mark does not prevent a finding of confusing similarity.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsComplainant maintains: (1) it has not given any authorization to Respondent to use the GEICO Mark in any form; (2) Respondent does not offer any legitimate GEICO services on the website to which the Domain Name resolves; and (3) under the circumstances here, Respondent’s use of the Domain Name to host a parked page comprising PPC links is not a bona fide offering of goods or services because the linked products and services compete with Complainant’s business, capitalize on the reputation and goodwill of the Mark, and otherwise mislead Internet users.
Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithRespondent registered and has been using a Domain Name that is confusingly similar to the GEICO Mark. When Respondent registered the Domain Name on May 29, 2020, Complainant had been using the Mark since at least 1964 (the registration date of United States trademark registration 763,274). It is highly likely Respondent was aware of the Mark when it registered the Domain Name because: (1) Respondent has not shown that he has any rights or legitimate interests in the Domain Name; (2) Respondent registered the Domain Name that is confusingly similar to Complainant’s registered Mark; and (3) Respondent is using the Domain Name in conjunction with a website that has PPC links to Respondent’s competitors (e.g., USAA and State Farm Insurance). On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
Furthermore, Respondent’s use of the Domain Name for commercial gain (i.e., PPC links directing website visitors to third party websites, including those of Complainant’s competitors), strongly suggest that Respondent’s intent in registering the Domain Name was to profit in some fashion from or otherwise commercially exploit Complainant’s GEICO Mark. There is no plausible reason for Respondent’s selection of the Domain Name that is confusingly similar to the GEICO Mark, in which Respondent has no rights or legitimate interests, other than as a deliberate attempt to profit unfairly from confusion with the Mark. See Government Employees Insurance Company v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC,
WIPO Case No. D2016-1275 (August 28, 2016), (transferring
Given these circumstances, Respondent’s failure to submit a formal response or to provide any evidence of actual or contemplated good-faith use, and Respondent’s concealment of his identity via the use of a privacy service, the Panel is left to conclude that Respondent’s use of the Mark is in bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Harrie R. Samaras
Sole Panelist
Date: February 25, 2022