The Complainant is Government Employees Insurance Company (“Geico”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Privacy.cc, United States / Bulent Tekmen. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 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 June 26, 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 amendment to the Complaint on June 30, 2020. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2020. The Center appointed William Towns as the sole panelist in this matter on July 28, 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 company offering various types of insurance services, including automobile and homeowners insurance. The Complainant has traded under the GEICO name since 1936, and is the holder of several trademark registrations for GEICO issued by the United States Patent and Trademark Office (USPTO) as follows: GEICO, United States Registration No. 158616, filed December 6, 1962, and registered on January 14, 1964 (insurance underwriting and related services) (first use in commerce 1948); GEICO, United States Registration No. 2601179, filed January 25, 2001, and registered on July 30, 2002 (insurance brokerage and underwriting services) (first use in commerce 1948). The Complainant maintains a website at “www.geico.com” in order to promote its insurance products and services and sell motor vehicle insurance policies. The Complainant represents that it has over 17 million policies and insures more than 28 million vehicles. The Respondent registered disputed domain name on November 27, 2017, according to the Registrar’s WhoIs records. The Complainant upon learning of the disputed domain name sent a cease and desist notice to the Respondent, to which the Complainant received no reply. The disputed domain name initially was parked on a The Complainant submits that the disputed domain name is identical to the Complainant’s GEICO mark with the exception of the country code Top-Level Domain (ccTLD) “.io”. The Complainant observes that panels consistently have held this to satisfy the first element of the Policy as well as similar country code policies. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or consented to the Respondent’s use of the GEICO mark in a domain name or otherwise. The Complainant further submits that the Respondent is not commonly known by the disputed domain name, and observes that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain name, which appropriates the Complainant’s GEICO mark, with knowledge of the Complainant’s rights in the GEICO mark and with bad faith intent to profit off those rights. The Complainant asserts that the GEICO mark is a famous mark, and “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant, citing Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant concludes there is no conceivable contemplated use of the disputed domain name by the Respondent that would not be an infringing use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration or use. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187.1 See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 domain name; and (iii) the domain name has been registered or is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration or use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. A. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s GEICO mark is clearly recognizable in the disputed domain name.3 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 In this instance the disputed domain name is identical to the Complainant’s mark when disregarding the country code Top-Level Domain “.io”. See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465 ( Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s GEICO mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s GEICO mark, and which the Respondent by all appearances is passively holding. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. It is apparent from the record that the Respondent was aware of the Complainant and had the Complainant’s well-known GEICO mark when registering the disputed domain name. Although the Respondent appears to be passively holding the disputed domain name, Internet users could anticipate that the disputed domain name would be associated with the Complainant.5 In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. In addition, the Respondent’s non-use of the disputed domain name, in the absence of any evidence or explanation by the Respondent, underscores the Respondent’s lack of rights or legitimate interests. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc.,WIPO Case No. D2017-0246. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration or use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes from the attendant circumstances that the Respondent more likely than not registered the disputed domain name seeking to profit from and exploit the Complainant’s GEICO mark. The Respondent’s apparent passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s GEICO mark is distinctive and well known in the Complainant’s trade, and it is clear beyond cavil that the Respondent was aware of the Complainant and the Complainant’s well-known GEICO mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. Accordingly, the Panel finds the Complainant has satisfied the requirements of 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 William Towns 1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate. 2 See WIPO Overview 3.0 , section 1.7 . 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. 4 See WIPO Overview 3.0, section 1.11 and cases cited therein. 5 See WIPO Overview 3.0, section 2.5.1 and cases cited therein.
Sole Panelist
Date: July 31, 2020
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