Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “U.S.”), represented by Burns & Levinson LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and RegistrarThe disputed domain names
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 disputed domain names. On December 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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. Complainant filed an amended Complaint on December 14, 2021.
The Center verified that the Complaint together with the amended 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 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on February 11, 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 BackgroundGovernment Employees Insurance Company (“GEICO”) is a well-known insurance provider who in the United States has offered several insurance services — including insurance brokerage and underwriting for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats — under the mark GEICO since at least 1948.
Complainant has over 17 million policies, 40,000 employees and insures more than 28 million vehicles. Further relevant information about GEICO and its business can be found at “www.geico.com/about/corporate/at-a-glance”.
Complainant owns several trademark registrations for the word GEICO in a variety of jurisdictions. Below are some examples of Complainant’s trademark registrations GEICO, before the United States Patent and Trademark Office, as well as before the European Union Intellectual Property Office, plus an International registration.
- U.S. Reg. No. 0763274, for for the following goods and services: “Insurance underwriting and related services – namely, automobile collision, comprehensive and liability insurance; boat owners insurance; overseas insurance; automobile and mobile home and boat financing; fire and homeowners’ insurance; mortgage cancellation insurance; life, hospitalization sickness and accident insurance” – in class 35 and 36, registered January 14, 1964.
- U.S. Reg. No. 2,601,179, for for the following goods and services: “Providing insurance brokerage and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods and boats; providing insurance brokerage and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods and boats via a global communications network” – in class 36, registered July 30, 2002.
- European Union Intellectual Property Office Reg. No. 1178718, for GEICO for the following goods and services: “Providing insurance and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel floods and boats to U.S. Nationals and NATO forces via a global communications network” – in class 36, registered September 4, 2013;
- International Reg. No. 1178718, for GEICO for the following goods and services: “Providing insurance and underwriting services for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel floods and boats to U.S. Nationals and NATO forces via a global communications network” – in class 36, registered September 4, 2013.
Moreover, Complainant has continuously advertised and delivered insurance underwriting and related services in extensive conjunction with the trademark GEICO since at least 1948 and owns its official domain name
The disputed domain names
Complainant pleads that the disputed domain names
Likewise, Complainant notes that Respondent is trying to take advantage of the renown achieved by the company through the mark GEICO, especially due to the number of followers in the social media of Complainant.
Therefore, according to Complainant, the disputed domain names
In addition, Complainant states that, according to the available data, Respondent does not have any rights or legitimate interests in respect of the trademarks GEICO, nor is widely known by the disputed domain names, authorized, or licensed to use such trademark as a domain name. And yet, Respondent registered and has been using the disputed domain names to purposively attract Internet users and consumers of the authentic GEICO to Respondent’s webpages.
Complainant indicates that Respondent has not used the disputed domain names
Complaint argues that this unauthorized use of the disputed domain names by Respondent severely harms Complainant by tarnishing and infringing its trademarks, reputation, and goodwill in the U.S. and around the world.
This way, Complainant states that no bona fide or legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.
At last, Complainant states that it is impossible that Respondent was not aware of Complainant’s rights and well-known reputation when registering the disputed domain names and, thus, that the disputed domain names
ln conclusion, Complainant sustains that, by the registration and use of the disputed domain names, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark GEICO as to the source, sponsorship, affiliation, or endorsement of Respondent's website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.
A. Identical or Confusingly SimilarComplainant has duly proven that it owns prior trademark rights for the sign GEICO and that the disputed domain names
Thus, the Panel finds that the disputed domain names
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[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.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie case showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names
Furthermore, Respondent has not used the disputed domain names in the context of a bona fide that could demonstrate legitimate interests, since the evidence shows that the disputed domain name
Moreover, evidence also revealed that the disputed domain names are being advertise for at least USD 899.
Finally, Complainant has proven its exclusivity regarding GEICO trademark rights, and Respondent’s knowledge of the trademark by reproducing the word element of trademark GEICO entirely in the websites. Neither is Respondent commonly known by the disputed domain names, nor has Respondent been authorized or licensed to use or register a domain name incorporating Complainant’s trademark.
For the reasons above mentioned, the Panel considers that no rights or legitimate interests of Respondent to the disputed domain names have been proven, and so the requirement of the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
The Respondent has registered disputed domain names that fully reproduce the Complainant’s GEICO trademark plus the additional terms “to”, “go”, and “inurance”. The Panel finds that is duly demonstrated that Respondent was well aware of Complainant’s rights to the trademark GEICO at the time of registration of the disputed domain names and registered them with the sole intention to: (i) attract Internet users and consumers that apparently are in search for authentic GEICO services; (ii) attempt to sell the disputed domain names, since they display promotional banners advertising the disputed domain names as being for sale for no less than USD 899.
Thus, the Panel believes that Respondent solely registration of the disputed domain names, which are confusingly similar to Complainant’s famous and widely known trademark, by an unaffiliated entity, can by itself create a presumption of bad faith (particularly where no conceivable good faith use could be made). In this regard, the Panel refers to the UDRP decision in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”
Moreover, the Panel takes into consideration another previous UDRP decision concerning PPC pages, as follows:
“Having found that the Disputed Domain Names are confusingly similar to the LEGO Mark and that the pay-per-click revenue derived by Respondent is not legitimate use, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii)” in LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024.
In light of the above, the Panel finds that the disputed domain names
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Gabriel F. Leonardos
Sole Panelist
Date: February 25, 2022