ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company (GEICO) v. Martin Lisle, GEICO Case No. D2023-1111 1. The Parties Complainant is Government Employees Insurance Company ("GEICO"), United States of America ("United States"), represented by Burns & Levinson LLP, United States. Respondent is Martin Lisle, GEICO, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2023. On March 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to Complainant on March 20, 2023, 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 March 22, 2023. 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 March 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 17, 2023. The Center appointed Richard W. Page as the sole panelist in this matter on April 25, 2023. 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. page 2 4. Factual Background Complainant 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 GEICO Mark since at least 1948. Complainant holds United States Federal trademark registrations of its GEICO Mark, including trademarks United States Patent and Trademark Office: Registration No. 0763274 dated January 14, 1964; and Registration No. 2601179 dated July 30, 2002, as well as trademark registrations with the European Union Intellectual Property Office: Registration No. 1178718 dated September 4, 2013 and International: Registration No. 1178718 dated September 4, 2013. Complainant maintains various social media accounts under the GEICO Mark, including Facebook, Twitter, Instagram, TikTok, YouTube, and LinkedIn, each of which attracts tens of thousands, and in some cases millions, of followers. In connection with its insurance products and services, Complainant has established a website located at "www.geico.com" which Complainant uses to promote and sell its insurance services under the GEICO Mark. The website enables computed users to access more about Complainant and obtain insurance quotes. The Disputed Domain Name was registered on February 25, 2023. 5. Parties' Contentions A. Complainant Complainant contends that through extensive use and promotional activities, the GEICO Mark has become uniquely associated with Complainant and its services. In fact, Complainant has over 18 million policies and insures over 30 million vehicles. Complainant also has of 43,000 employees and is one of the fastestgrowing auto insurers in the United States. Complainant further contends that the Disputed Domain Name consists entirely of the GEICO Mark along with the generic or descriptive term "corporate" and the generic Top-Level Domain ("gTLD") ".org". Complainant further contends that the Disputed Domain Name is currently being passively held and resolves to an inactive error website. Complainant further contends that it has not authorized Respondent's use of the GEICO Mark or the registration of the Disputed Domain Name. Complainant asserts that there is no evidence that Respondent has any legitimate claims to the Disputed Domain Name and any current conceivable future use of the Disputed Domain Name violates the Policy. Complainant further asserts that Respondent registered, is using, and has used the Disputed Domain Name to intentionally attract Internet users and consumers looking for legitimate GEICO services to Respondent's own webpage all for Respondent's illicit commercial gain. Complainant further asserts that there is no evidence that (i) Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name relates to a bona fide offering of good or services; (ii) Respondent is commonly known by the Disputed Domain Name or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant alleges that Respondent knew or should have known of Complainant's rights in the GEICO Mark when it registered the Disputed Domain Name. page 3 Complainant further alleges that Respondent actively took steps to conceal its identity by using a privacy proxy service in conjunction with providing inaccurate, incomplete, or conflicting registration information underling the privacy or proxy services. Respondent appears to have provided, at minimum, false address and phone number in its registration formation by providing the address of the Indiana Department of Veteran's Affairs in the registration of the Disputed Domain Name information, despite there being no evidence that Respondent is part of the Indiana Department of Veteran's affairs. Complainant further alleges that Respondent registered the Disputed Domain Name using false contact information that on its face impersonates Complainant by falsely identifying itself as GEICO to conceal its true identity. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable." Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the GEICO Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the GEICO Mark. Complainant holds United States Federal trademark registrations of its GEICO Mark, including trademarks United States Patent and Trademark Office: Registration No. 0763274 dated January 14, 1964; and Registration No. 2601179 dated July 30, 2002, as well as trademark registrations with the European Union Intellectual Property Office: Registration No. 1178718 dated September 4, 2013 and an International: Registration No. 1178718 dated September 4, 2013. Complainant has made a prima facie case for its trademark rights in the GEICO Mark and Respondent has not contested these registrations. Therefore, the Panel finds for purposes of this proceeding Complainant has enforceable rights in the GEICO Mark. The Disputed Domain Name consists entirely of the GEICO Mark along with the term "corporate" and the gTLD ".org". page 4 Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as ".org" may be disregarded for purposes of assessing confusing similarity. Based on the evidentiary record in this case, the Panel finds that the Disputed Domain Name is confusingly similar to the GEICO Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the GEICO Mark. There is no evidence that (i) Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name relates to a bona fide offering of good or services; (ii) Respondent is commonly known by the Disputed Domain Name or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name. Respondent has not contested the prima facia case. In addition, the Panel finds that the Disputed Domain Name, incorporating the Complainant's GEICO trademark in its entirety, with the addition of the term "corporate", carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: page 5 (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the GEICO Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the GEICO Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the GEICO Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Such factors include that Respondent knew or should have known of Complainant's rights (Section 3.2.2); passive holding of the Disputed Domain Name (Section 3.3) and anonymizing the registration of the Disputed Domain Name (Section 3.6). The Panel finds that Respondent knew of should have known of Complainant's rights in the GEICO Marks, has engaged in passive holding, and tried to conceal its identity while registering the Disputed Domain Name. Therefore, the Panel finds that Complainant has met the requirement of paragraph 4(a)(iii) of the Policy. 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 Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: May 8, 2023
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