ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company v. D M Case No. D2023-3096 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 D M, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2023. On July 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2023, 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 July 25, 2023. 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 August 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2023. The Center appointed Ezgi Baklacı Gülkokar as the sole panelist in this matter on October 2, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, also known as GEICO, is an internationally well-known insurance provider company incorporated in the United States. The Complainant provides 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. The Complainant is the owner of the GEICO trademark registrations through the Madrid System, and United States Patent and Trademark Office ("USPTO"). The relevant GEICO trademarks are International Registration no. 1178718 registered on September 4, 2013, designating inter alia the European Union, USPTO Registration no. 763274 registered on January 14, 1964, and USPTO Registration no. 2601179 registered on July 30, 2002. The Complainant holds and uses the domain name that enables computer users to access information regarding the Complainant's insurance services, manage their policies and claims, learn more about the Complainant, and obtain insurance quotes (Annex 6 to the Complaint). The Complainant's domain name was registered on July 22, 1995. The disputed domain name was registered on January 13, 2023. The disputed domain name is currently being passively held and does not revert to any active website as evidenced with Annex 7 to the Complaint. The Respondent is reportedly based in the United States. 5. Parties' Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows: Identical or Confusingly Similar The Complainant argues that the disputed domain name is confusingly similar to the GEICO trademark, the sole difference being the addition of the term "usa" which is a geographical term - an abbreviation for "United States of America" and fails to distinguish the disputed domain name from the Complainant's trademark. The Complainant also contends that the generic Top-Level Domain ("gTLD") ".com" in the disputed domain name is a standard registration requirement and that the extension is not to be taken into account when comparing a disputed domain name to the Complainant's trademarks. Rights or Legitimate Interests The Complainant argues that the Respondent has no rights and legitimate interests in the disputed domain name because the Respondent has no affiliation with the Complainant and the Complainant has not given the Respondent permission to register and/or use the Complainant's trademarks in any manner. In addition, the Complainant argues that the Respondent is not known by the disputed domain name and the Complainant submits that the Respondent is not authorized to use the Complainant's trademark, nor the Respondent is the licensee of the mark. page 3 Furthermore, the Respondent has neither made use of the disputed domain name nor engaged in any demonstrable preparations to use it in connection with a bona fide offering of goods or services, as the disputed domain name resolves to an inactive page. The Complainant iterates that the Respondent's activities create a likelihood of confusion regarding source, and the Complainant further argues that such use cannot be accepted within the scope of legitimate noncommercial or fair use. Registered and Used in Bad Faith The Complainant initially argues that the GEICO is a well-known trademark throughout the world. The Complainant also notes that previous UDRP decisions already recognized that the GEICO mark is "known throughout the world" and that the Respondent should be presumed to have known or should have known the GEICO mark, which may be considered an inference of bad faith. The Complainant cites in support various previous UDRP decisions. It has been further argued by the Complainant that the fact that the disputed domain name resolves to an inactive website does not prevent a finding of bad faith due to the passive holding doctrine. The Complainant also argues that the Respondent has knowingly registered the disputed domain name in order to create an impression of an association with the Complainant. In summary, the Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and (ii) the 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. A. Identical or Confusingly Similar The Complainant has demonstrated that it has well-established rights in the GEICO trademarks. The disputed domain name consists of the registered trademark GEICO with an additional element "usa" at the end which is an abbreviation for "United Stated of America", and the gTLD ".com". 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 be considered confusingly similar to the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. page 4 The Panel agrees that the additional element "usa" does not prevent a finding of confusing similarity as the Complainant's trademark GEICO remains recognizable within the disputed domain name (WIPO Overview 3.0, section 1.8; and DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). Moreover, the gTLD ".com." is disregarded in the confusing similarity test as it is viewed as a standard registration requirement for technical reasons (WIPO Overview 3.0, section 1.11.1). In the light of the above, the Panel is of the view that the disputed domain name is confusingly similar to the Complainant's trademarks and the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While the overall burden of proof in UDRP proceedings is on the Complainant, previous UDRP panels have recognized that proving a respondent that it 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 (WIPO Overview 3.0, section 2.1; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel notes that there is no evidence showing that the Respondent holds any rights for the term GEICO. The Panel also notes that there is no evidence showing that the Respondent is authorized or licensed to use the Complainant's trademark GEICO. The case file also does not contain any evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. Further, the Panel notes that there is no evidence of the Respondent's use of, or preparation to use the disputed domain name; and there is also no evidence that the Respondent is making a legitimate noncommercial or fair use under the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or any legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that a complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's trademark (WIPO Overview 3.0, section 3.1). The Panel finds that at the time the disputed domain name was registered the Respondent more likely than not was aware of the trademark GEICO as the Complainant's trademark registrations significantly predate the registration date of the disputed domain name and apart from the identical use of the Complainant's GEICO trademark, the term "usa" shows the Respondent's knowledge of the Complainant's country. According to the evidence submitted by the Complainant, the Panel finds that the Respondent knew or should have known about the Complainant's rights (and such information could readily have been reached by a quick online search). See Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). page 5 In addition, previous UDRP panels have held that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4). The GEICO trademarks are recognizable insurance brands in the United States and indeed, is known throughout the world and it may suggest the disputed domain name has been selected with a deliberate intent to create an impression of an association with the Complainant (see General Motors LLC v. desgate, WIPO Case No. D2012-0451) The Panel agrees that the Respondent not only knows the Complainant's marks but also intends to benefit from their reputation as well. Although the disputed domain name does not resolve to an active website, considering the fame and reputation of the Complainant's marks, the implausibility of any good faith use that the disputed domain name may put and lack of a response from the Respondent, the Panel finds that the passive holding of the disputed domain name in this case constitutes bad faith under the Policy. See WIPO Overview 3.0. section 3.3. In light of these particular circumstances, the Panel concludes that the Complainant has succeeded in proving the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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. /Ezgi Baklacı Gülkokar/ Ezgi Baklacı Gülkokar Sole Panelist Date: October 16, 2023
Full & Egal Universal Law Academy