WIPO Domain Name Decision D2022-0732 for geicotienda.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company v. Contact Privacy Inc. Customer 0163664000 / Dieumaitre Sintama, geico-ko Case No. D2022-0732 1. The Parties The Complainant is Government Employees Insurance Company, United States of America ("United States"), represented by Burns & Levinson LLP, United States. The Respondent is Contact Privacy Inc. Customer 0163664000, Canada / Dieumaitre Sintama, geico-ko, Chile. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2022. On March 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on March 3, 2022, 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 March 11, 2022, 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 March 11, 2022. 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 March 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2022. page 2 The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 6, 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 Background The Complainant is an international insurance company that has been in business throughout the United States under the GEICO trademark since at least 1948. The Complainant has over 18 million policies and insures more than 30 million vehicles. It has over 40,000 employees and is one of the fastest-growing auto insurers in the United States. The Complainant owns, among others, the following trademark registrations: Mark Registration no. Registration Date Class Jurisdiction GEICO 0763274 January 14, 1964 36 United States GEICO 2601179 July 30, 2002 36 United States GEICO 1178718 September 4, 2013 36 European Union GEICO UK00801178718 August 27, 2015 36 United Kingdom The Complainant owns the domain name , which resolves to its official website. The disputed domain name was registered on February 2, 2022. The disputed domain name resolves to a website that offers for sale various goods, including fishing rods and video projectors. 5. Parties' Contentions A. Complainant The Complainant argued the following: That it maintains various social media accounts under the GEICO trademark, including Facebook, Twitter, Instagram, TikTok, YouTube, and LinkedIn, each of which has tens of thousands, and in some cases millions of followers. That the disputed domain name resolves to a website with content in Spanish that offers a wide variety of consumer goods for sale. That such goods range from women's bracelets to fishing rods sold under the name "geico-ko". That the Complainant has not authorized the Respondent to use the GEICO trademark or to register the disputed domain name. That the Complainant sent the Respondent a request to cease the infringing use of the GEICO trademark and transfer the disputed domain name, but that the Respondent did not reply. I. Identical or Confusingly Similar That the disputed domain name incorporates the GEICO trademark, plus the term "tienda" (meaning "shop" in Spanish), which renders said disputed domain name confusingly similar to the Complainant's GEICO trademark. page 3 That the addition of the term "tienda" does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark. That the addition of the generic Top-Level Domain ("gTLD) ".com" to the disputed domain name constitutes a technical requirement of the Domain Name System ("DNS"), which should be disregarded in assessing the confusing similarity test. II. Rights or Legitimate Interests That the Respondent lacks rights to or legitimate interests in the disputed domain name, since there is no evidence showing: (i) the Respondent's use of, or demonstrable preparations to use the disputed domain name related to a bona fide offering of goods and services, (ii) that the Respondent is commonly known by the disputed domain name, or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. That the Complainant has not given any authorization to the Respondent to use its GEICO trademark in any form, and that the Respondent does not offer any legitimate GEICO services on the website to which the disputed domain name resolves. Therefore, the Respondent has no rights to, and cannot conduct any legitimate business under the disputed domain name. That the Respondent's use cannot be considered "fair" since the disputed domain name carries a risk of implied association. That the Respondent's use of the disputed domain name to sell consumer goods evidences its intent to unfairly profit from the Complainant's reputation. III. Registered and Used in Bad Faith That the incorporation of the Complainant's well-known GEICO trademark in the disputed domain name creates a presumption of bad faith. That the GEICO trademark is famous and one of the most recognizable insurance brands in the United States, which is also known throughout the world. That the Respondent's promotion and commercialization of a wide variety of consumer goods, ranging from women's bracelets to fishing rods, which are unrelated to the Complainant, is to catch the attention of consumers, by taking advantage of the Complainant´s goodwill and reputation. That the lack of response to the Complainant's demand letter, and the continuation of its bad faith use of the disputed domain name despite having received a demand letter, further evidence the Respondent's bad faith registration and use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. page 4 In view of the Respondent's failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant's undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292 and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark GEICO in different jurisdictions, including the United States, the European Union, and the United Kingdom. The disputed domain name is confusingly similar to the Complainant's trademark GEICO, as it incorporates said trademark entirely, with the addition of the term in Spanish "tienda", which means "store" in English. Generally, Panels have found that the inclusion of terms in a disputed domain name does not prevent a finding of confusing similarity under the first element (see section 1.7, and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). In the present case, the disputed domain name incorporates the term "tienda". This term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark. The addition of the gTLD ".com" to the disputed domain name constitutes a technical requirement of the DNS. Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919). Therefore, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has made a prima facie case asserting that there is no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has not been commonly known by the disputed domain name. Also, the Complainant has argued that it has not authorized the Respondent to use the GEICO trademark (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; and Autodesk, Inc. v. Brian Byrne, mesh IP, LLC WIPO Case No. D2017-0191). The Respondent did not contest these allegations. According to the evidence filed by the Complainant, the website to which the disputed domain name resolves seems to be an online store, through which different products are offered for sale (which products do not page 5 compete with the Complainant's services). However, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation since Internet users may think that the website to which this disputed domain name resolves is affiliated to or sponsored by the Complainant. A finding of impersonation prevents a determination of a bona fide offering of goods. Said composition of the disputed domain name cannot constitute fair use since it impersonates the Complainant, or at least it suggests sponsorship from or endorsement by the Complainant. This also translates to a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0, see also Euro Sko Norge AS v. Whoisguard Inc. / Shier Dede, Shier Dede WIPO Case No. D2020-0194, Bechtel Group, Inc. v. Raman Shuk WIPO Case No. D2020-1469, Biofarma v. Dawn Mason WIPO Case No. D2019-1952). In light of the above, the Complainant has made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant's assertions. Therefore, the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has 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 your documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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. As previously stated, the Complainant has proven that it owns registrations for the trademark GEICO in different jurisdictions, including the United States, the European Union, and the United Kingdom. Considering the intensive use that the Complainant has made of its GEICO trademark, its online presence, the reputation that it enjoys, and that said fanciful trademark does not correspond to a dictionary word, it is safe to infer that GEICO is a well-known trademark. This Panel agrees with the determinations reached in Government Employees Insurance Company ("GEICO") v. 尹 军 (yinjun), WIPO Case No. D2020-3332, Government Employees Insurance Company v. Joel Rosenzweig, RegC, WIPO Case No. D2021-1221, in that the GEICO trademark is famous and wellknown. Given the fact that GEICO is a fanciful, well-known trademark that is not a dictionary word, since it is an acronym of "Government Employees Insurance Company" (the corporate name of the Complainant), this Panel finds that the Respondent knew or should have known the Complainant and its trademark at the time page 6 of registration of the disputed domain name, which constitutes bad faith registration under the Policy. Previous panels appointed under the UDRP have found that - depending on the case circumstances - the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0). This is so in the present case. As noted in the discussion of the second element of the Policy, impersonation and the risk of implied affiliation to the Complainant constitute use in bad faith (see Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi, WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283; and Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2016-0800). Therefore, the third element of the Policy has been met. 7. Decision 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 name be transferred to the Complainant. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: April 20, 2022


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