ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company ("GEICO") v. jenny lover Case No. D2023-4454 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 jenny lover, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2023. On October 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 (REDACTED FOR PRIVACY, PRIVACY SERVICE PROVIDED BY WITHHELD FOR PRIVACY EHF) and contact information in the Complaint. The Center sent an email communication to Complainant on November 1, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 1, 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 5, 2023. page 2 The Center appointed Timothy D. Casey as the sole panelist in this matter on December 20, 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. 4. Factual Background Complainant is an insurance provider that provides insurance services in the United States, including brokerage and underwriting, for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats. Complainant first began offering insurance services under the GEICO trademark in 1948. Complainant advertises extensively through social media and other channels, provides insurance to millions of customers, has over 43,000 employees, and operates a website promoting and selling insurance services at the domain name . Complainant has trademark registrations for GEICO (the "GEICO Marks"), including the following: Mark Jurisdiction Class(es) Registration No. Registration Date GEICO United States United States Class 102 763274 January 14, 1964 GEICO United States 36 2601179 July 30, 2002 GEICO European Union 36 1178718 September 4, 2013 The disputed domain name was registered on October 8, 2023. At the time of filing the Complaint, the disputed domain name was being passively held and resolved to an inactive GitHub website. 5. Parties' Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that its trademark registrations satisfy the threshold requirement of Complainant having trademark rights and that the disputed domain name is confusingly similar to the GEICO Marks because the GEICO Marks are recognizable within the disputed domain name. Complainant asserts that the addition of the descriptive or generic word "project" and a Top-Level Domain ("TLD") do not add distinction or avoid confusingly similarity. Complainant has not given any authorization to Respondent to use the GEICO Marks in any form, nor does Respondent offer any legitimate services on the website to which the disputed domain name resolves. Under those circumstances, Complainant contends Respondent lacks rights or a legitimate interest in the disputed domain name. Complainant further contends that there is no evidence that Respondent: is using or making demonstrable preparations to use the disputed domain name related to any bona fide offering of goods or services, is commonly known by the disputed domain name, or is making a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent's incorporation of the GEICO Marks into the disputed domain name creates a presumption of bad faith. Complainant further contents that Respondent's passive holding of the disputed domain name that reverts to an inactive website does not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent Respondent did not reply to Complainant's contentions. page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the GEICO Marks are reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel also finds that the GEICO Marks are recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here "project", may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The addition of a TLD in the disputed domain name is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The composition of the disputed domain name is such to carry a risk of implied affiliation to the Complainant, which cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. page 4 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the composition of the disputed domain name indicates that Respondent was aware of the GEICO Marks prior to registration of the disputed domain name. Panels have found that the non-use of a domain name (including a blank or inactive webpage) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant's trademark, the composition of the disputed domain name, the Respondent's failure to participate in this proceeding, and the Respondent's apparent provision of false contact information in view of the courier's inability to deliver the Center's written communication, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds that the Complainant has established the third element 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 the Complainant. /Timothy D. Casey/ Timothy D. Casey Sole Panelist Date: January 3, 2024
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