ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Government Employees Insurance Company (“GEICO”) v. Michael Carroll Case No. D2024-1866 1. The Parties The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States. The Respondent is Michael Carroll, 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 May 2, 2024. On May 3, 2024, the Center emailed the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2024, the Registrar emailed the Center its verification response disclosing the registrant and contact information for the disputed domain name, which differed from the named Respondent (Registration Private, Domains By Proxy, Inc.) and contact information in the Complaint. The Center sent an email to the Complainant on May 8, 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 13, 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 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2024. On June 4, 5, and 7, 2024, following the Notification of Respondent Default, the Respondent submitted informal emails claiming not to have received notification of the Complaint, broadly denying the allegation of the complaint, and requesting a 30-day extension. The Center responded by providing the Respondent with additional copies of all pertinent case
page 2 materials and stated that the Administrative Panel, in its discretion, may consider any Response submitted by the Respondent. The Respondent did not submit a formal Response. The Center appointed William F. Hamilton as the sole panelist in this matter on June 13, 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 has issued over 16 million insurance policies and insures more than 28 million vehicles. The Complainant employs over 38,000 individuals and is recognized as a major automobile insurer in the United States. The Complainant holds numerous registrations for the trademark GEICO (the “Mark”). These registrations include, but are not limited to: - United States Registration No. 0763274, registered on January 14, 1964. - United States Registration No. 2601179, registered on July 30, 2002. - European Union Intellectual Property Office Registration No. 1178718, registered on September 4, 2013. - International Registration No. 1178718, registered on September 4, 2013. The Complainant maintains various social media accounts utilizing the Mark. These accounts include platforms such as Facebook, Twitter, Instagram, TikTok, YouTube, and LinkedIn, each with at least tens of thousands of followers. The disputed domain name was registered on March 1, 2024, and at the time of filing of the complaint it resolved to a parked website displaying a series of pay-per-click (“PPC”) links. These links contain terms associated with the Complainant’s business. The subdomain of the disputed domain name is the same as the disputed domain name, except for adding the term “pay” at the beginning of the subdomain. The subdomain webpage contains fields that invite visitors to input credit card information to make “online payments”. 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. Notably, the Complainant contends that the disputed domain name is confusingly similar to the Mark because the disputed domain name is identical to the Mark except that the disputed domain name adds the words “voices” and “of”. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, never operated a business under the disputed domain name, and never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent knew of the Mark when registering the disputed domain name and that the disputed domain name was registered in bad faith to confuse Internet users and to obtain illicit consumer “payments” through a fraudulent subdomain . B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In email communications to the Center on June 4, 5 and 7 2024, the Respondent denied the Complainant's operative allegations without
page 3 presenting any argument or evidence. It expressed concern that it had being targeted with false allegations and legal intimidation, it claimed false statements had been made, including an accusation of fraudulently collecting financial information through its website. It indicated that it plans to file a countersuit and had contacted its legal team. In the email communications, the Respondent requested a thirty-day extension to file a response due to a lack of communication. Paragraph 5(e) of the Rules provides that, at the request of a Respondent, “the Provider may, in exceptional cases, extend the period of time for the filing of the response.” It is important to note that in this matter (i) the Respondent’s email address in its email communications of June 4, 5, and 7 is an email address used by the Center to initially notify the Respondent of the proceeding, (ii) the Respondent’s thirty-day extension request failed to provide any facts or genuine argument addressing or rebutting any the allegation of the Complaint or explaining why such a substantial enlargement was necessary, (iii) that the Respondent indicated in its email that the Respondent had contacted its “legal team,” and (iv) the Center in its response to the Respondent’s emails explained to the Respondent that although the proceedings had commenced the Panel in its discretion may consider any response submitted by the Respondent which, in fact, provided the Respondent with ample time to submit a response. The Respondent never submitted a response. These circumstances did not establish an “exceptional case” warranting a formal thirty-day enlargement under Paragraph 5(e). 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in the Mark for the purposes of the Policy by virtue of the Mark’s registrations. WIPO Overview 3.0, section 1.2.1. The disputed domain name’s only deviation from the Mark is that the disputed domain name adds the expression “voices of” as a prefix, albeit without any separation between the words. This slight alteration between the Mark and the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Mark. The Mark is recognizable in the disputed domain name notwithstanding the added words. WIPO Overview 3.0, section 1.8. The Panel finds that 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
page 4 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has 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. Moreover, the disputed domain name resolved to a PPC website with names similar to the services offered by the Respondent and which supports a subdomain for illicit payments. PPC websites offering competitive services under a confusingly similar disputed domain name do not establish rights or legitimate interests, and the illegal or fraudulent use of a disputed domain name can never establish rights or legitimate interests in a disputed domain name. WIPO Overview 3.0, section 2.13. In its informal email communications on June 4, 5, and 7, 2024, the Respondent has provided no explanation why it had registered the disputed domain name. The Panel finds that 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. Numerous factors indicating bad faith registration and use are evident in this case. Firstly, the disputed domain name was registered using a privacy service, suggesting an intent to conceal the registrant's identity. Additionally, the Mark is widely recognized, and it is implausible that the Respondent was unaware of the Mark at the time of registration. The prefix of the disputed domain name “voices of” was intended to attract Internet users' attention to the Mark and redirect them to the Respondent's website. Furthermore, the disputed domain name resolves to a PPC website offering services competing with the Complainant’s. Finally, the Complainant has provided evidence that the disputed domain name supports a fraudulent subdomain for “payments,” which misleads and confuses users. Based on these compelling factors, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith. WIPO Overview 3.0, section 3.1 and 3.2. 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. /William F. Hamilton/ William F. Hamilton Sole Panelist Date: June 27, 2024
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