The Complainant is Government Employees Insurance Company (GEICO), United States of America (“U.S.”), represented by Burns & Levinson LLP, U.S.
The Respondent is Jun Yin, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 22, 2020 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 amended Complaint on July 23, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. The Center appointed Peter Burgstaller as the sole panelist in this matter on August 21, 2020. 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 well-known U.S. insurance company and has been trading under the trademark GEICO for decades; it owns exclusive rights in such trademarks, evidenced by numerous registered trademarks that wholly incorporate the GEICO Mark or iconic visual representations thereof, including the registrations with the United States Patent and Trademark Office in class 36: GEICO, registration number 763,274, dated January 14, 1964; GEICO, registration number 2,601,179, dated July 30, 2002; GEICO DIRECT, registration number 1,442,076, dated June 9, 1987; GEICO DIRECT, registration number 2,071,336, dated June 17, 1997; GEICO AUTO REPAIR XPRESS, registration number 2,982,260, dated August 2, 2005; and GEICO MOTORCYCLE, registration number 3,262,263, dated July 10, 2007. (Annex C to the Complaint). The Complainant also offers its insurance products and services on a website located at “www.geico.com” (Annex D to the Complaint). The disputed domain name resolves to a website containing a list of links to unrelated third-party websites, including to websites of Complainant’s competitors, as well as to the Complainant (Annex E to the Complaint). The disputed domain name was registered on July 2, 2020 (Annex A to the Complaint). The Registrar disclosed registrant and contact information for the disputed domain name differed from the named Respondent and contact information in the WhoIs-database and the initial Complaint. 5. Parties’ Contentions A. Complainant The Complainant is a well-known insurance company that has provided insurance services since 1936. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. The Complainant has been trading under the trademark GEICO for nearly 80 years and owns exclusive rights in such. The Complainant’s rights are evidenced by its numerous federally registered trademarks and service marks that wholly incorporate the GEICO Mark or iconic visual representations thereof, including, without limitation, the registrations with the United States Patent and Trademark Office for services in class 36: GEICO, registration number 763,274, dated January 14, 1964; GEICO, registration number 2,601,179, dated July 30, 2002; GEICO DIRECT, registration number 1,442,076, dated June 9, 1987; GEICO DIRECT, registration number 2,071,336, dated June 17, 1997; GEICO AUTO REPAIR XPRESS, registration number 2,982,260, dated August 2, 2005; and GEICO MOTORCYCLE, registration number 3,262,263, dated July 10, 2007. The Complainant has made extensive use of its distinctive GEICO Mark in connection with its services. The Complainant invests large sums to promote and develop the GEICO Mark through television, print media and the Internet. As a result of such efforts, the GEICO Mark is a powerful, recognizable symbol of the Complainant’s goodwill and excellent reputation. Through extensive use and promotional activities using the GEICO Mark, it has become uniquely associated with the Complainant and its services. In fact, the Complainant has over 17 million policies and insures more than 28 million vehicles with over 40,000 employees, and is one of the fastest-growing auto insurers in the U.S. In connection with its insurance products and services, the Complainant has established a website located at “www.geico.com”, which the Complainant uses to promote and sell its motor vehicle insurance services. The disputed domain name consists entirely of the GEICO Mark adding only the combined country code Top-Level Domain (“ccTLD”) elements “.com.co.”. The disputed domain name currently resolves to a website containing a list of apparent pay-per-click links to unrelated third-party websites, including to websites of the Complainant’s competitors. The Complainant had not and has not authorized the Respondent’s use of the GEICO Mark or the registration of the disputed domain name. The Respondent is using and has used the disputed domain name to intentionally attempt to attract Internet users and consumers looking for legitimate services and/or authorized partners of the Complainant to the Respondent’s own webpage by creating a likelihood of confusion with the Complainant, all for commercial gain. Indeed, there is no evidence that Respondent has any legitimate claims to the disputed domain name and any current or conceivable future use of the disputed domain name. The current unauthorized use of the disputed domain name by the Respondent severely harms the Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the U.S. and around the world. In sum, the disputed domain name is identical or at least confusingly similar to the Complainant’s registered trademarks, the Respondent has no rights or legitimate interests in the disputed domain name, and has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to 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 disputed domain name entirely incorporates and reproduces the Complainant’s trademarks GEICO; the disputed domain name only differs from the Complainant’s distinctive trademarks inasmuch as it adds the ccTLD “.com.co”. However, it is well established that the specific top-level domain name is generally not an element of distinctiveness and does not eliminate confusing similarity with the trademarks of the Complainant since the disputed domain name remains visually, aurally, and conceptually similar with the Complainant’s distinctive trademarks GEICO (see e.g. Furla S.P.A. v. Cai Jin Yong,WIPO Case No. DCO2012-0011 It has also long been established under UDRP decisions that a ccTLD such as “.co” cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity under the first element of the Policy, the ccTLD may be ignored. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent 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 (see WIPO Overview 3.0, section 2.1). In the present case, the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the evidence presented by the Complainant in the Complaint) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s GEICO trademarks in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001), the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith, and - the disputed domain name is being used by the Respondent in bad faith. Bad faith registration Due to the well-known and distinctive character and reputation of the GEICO mark, it is uncontested for this Panel that the Respondent was aware of the Complainant and its GEICO mark when registering the disputed domain name. Moreover, the disputed domain name entirely reproduces the distinctive GEICO mark, which is in itself highly unlikely without knowledge of the Complainant or its marks. Moreover, the Respondent specifically referenced the Complainant on the website to which the disputed domain name resolves – the Respondent therefore must have known the Complainant. Finally, where it appears that a respondent provides false contact information merely to avoid being notified of a UDRP proceeding filed against it, panels already found that this supports an interference of bad faith – a respondent filing a response may refute such interference (see section 3.6 of the WIPO Overview 3.0). In the present case, the registrant and contact information for the disputed domain name disclosed by the Registrar differed from that in the WhoIs-database and the initial Complaint. This fact also shows bad faith in the view of this Panel since the Respondent did not respond at all. In summary, there are no doubts for this Panel that the disputed domain name was registered in bad faith by the Respondent. Bad faith use As can be seen from the evidence put forward by the Complainant, the disputed domain name resolves to a website containing hyperlinks to third-party websites featuring services provided by the Complainant’s competitors and therefore attracts and redirects Internet users to websites of the Complainant’s competitors. The only purpose of that is to achieve commercial gain without showing any rights or legitimate interests in respect of the disputed domain name; this conduct of the Respondent also disrupts the Complainant’s business. The use of the disputed domain name moreover takes unfair advantage of the Complainant’s GEICO trademark, creates confusion with the consumers or potential consumers, and interferes with the Complainant’s business. Accordingly, the disputed domain name is being used in bad faith by the Respondent. On the basis of the evidence put forward by the Complainant, it is clear for this Panel that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with 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 Peter Burgstaller
Sole Panelist
Date: August 29, 2020
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