ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company (“GEICO”) v. Jackson Junior firpo Case No. D2024-1855 1. The Parties The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States of America. The Respondent is Jackson Junior firpo, Hungary. 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 May 2, 2024. On May 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2024, 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 (Domains by Proxy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2024, 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 May 6, 2024. 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 May 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2024. The Respondent sent an email communication to the Center on May 28, 2024.
page 2 The Center appointed Kaya Köklü as the sole panelist in this matter on June 7, 2024. 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 a company with its registered seat in the United States, which provides insurance services, including insurance brokerage and underwriting for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats, since at least 1948. Meanwhile, the Complainant has over 38,000 employees, 16 million policies and insures more than 28 million vehicles. The Complainant provides its services under its trademark GEICO, which is a registered trademark in various jurisdictions. Among others, the Complainant is the registered owner of the European Union Trademark Registration No. 1178718, registered on September 4, 2013, for GEICO, covering protection for various insurance services as protected in class 36 (Annex 3 to the Complaint). The Complainant further owns and operates its main website at “www.geico.com” (Annex 4 to the Complaint). The Respondent is reportedly located in Hungary. The disputed domain name was registered on April 4, 2024. The disputed domain name has yet not been linked to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The Center, however, received an informal email communication from the Respondent on May 28, 2024, stating mainly the following: “The domain geicosol.xyz that I purchased is completely separate from the GEICO company, and I have no intention of using it (it is not and will not be in use). The geicosol.xyz is not an abbreviation for the supposed “GEICO SOLUTIONS” but was intended to be an abbreviation for “GEICO SOLANA”, a crypto meme-blog.” 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. 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 a trademark in which the Complainant has rights; and
page 3 (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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. WIPO Overview 3.0, section 4.3. For the evaluation of this case, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), and, where appropriate, will decide consistent with the consensus views stated therein. 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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the GEICO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the GEICO mark is 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. Although the addition of other terms or letters, here “sol”, may bear on assessment of the second and third elements, the Panel finds the addition of such letters 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 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 the 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. In assessing possible rights or legitimate interests of the Respondent in using the disputed domain name, the Panel notes that the Complainant’s GEICO trademark has no ordinary or dictionary meaning in relation to the Complainant’s insurance services, and hence, can be assessed as inherently distinctive. In addition, the GEICO trademark has acquired further distinctiveness and reputation in the insurance market since its first
page 4 use in 1948, particularly proven by 38,000 employees and more than 28 million insured vehicles. Also, it has not been rebutted by the Respondent that the Complainant is a widely known provider of insurance services, particularly in the United States. Against this background, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel further notes that the nature of the disputed domain name, comprising the entirety of the Complainant’s GEICO trademark (plus the letters “sol”), indicates the Respondent’s awareness of the Complainant and its GEICO trademark and his intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests. The Respondent has in return not rebutted the 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 Respondent’s brief and unsubstantiated allegation in its email communications to the Center on May 28, 2024, that he has no intention to use the disputed domain name and that it was initially intended to be an abbreviation for crypto blog named “Geico Solana”, lacks in view of the Panel any reasonable basis. Such composition of terms and letters is not common, bears no ordinary or dictionary meaning when read together, and there is no use of the disputed domain name in association with such words so as to give any credibility to such claim. On the contrary, the Panel notes that where a domain name consists of a trademark with an additional term or letters, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Here, the nature of the disputed domain name (consisting of the entirety of the Complainant’s trademark in addition with the letters “sol”) effectively suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. The fact that the disputed domain name has not been actively used by the Respondent so far additionally supports the Panel’s assessment of a lack of rights or legitimate interests. All in all, the Panel finds the second element of the Policy has been established. 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Respondent must have had the Complainant and its GEICO trademark in mind when registering the disputed domain name. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name, which is comprising the Complainant’s GEICO trademark entirely, even though it has no ordinary or dictionary meaning. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith. The Panel notes that the disputed domain name has yet not been actively used. Panels have found that the non-use of a domain name 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.
page 5 In this regard, the Panel notes the reputation of the Complainant’s GEICO trademark in the insurance sector, and the inherently misleading composition of the disputed domain name, which comprises the entirety of the Complainant’s fanciful GEICO trademark 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. Taking all facts of the case into consideration, 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. /Kaya Köklü/ Kaya Köklü Sole Panelist Date: June 21, 2024
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