WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Julia Taylor
Case No. D2001-0742
1. The Parties
The Complainant is Government Employees Insurance Company ("GEICO"), a corporation organized and existing under the laws of the State of Maryland, United States of America, having its principal place of business at Chevy Chase, Maryland, United States of America. The Respondent is Julia Taylor, an individual residing in Washington, District of Columbia, United States of America.
2. The Domain Name and Registrar
The domain name at issue is: <geicodirect.org>, which domain name is registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, United States of America.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 4, 2001, in electronic form. The hard copy of the Complaint was received by the WIPO Center on June 6, 2001. The WIPO Center acknowledged receipt of the Complaint on June 7, 2001.
On June 7, 2001, a Request for Registrar Verification was transmitted to NSI. NSI replied on June 12, 2001.
A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on June 12, 2001. In undertaking the review, the WIPO Center Case Administrator answered "No" to question (17): "Does this Complaint specify at least one mutual jurisdiction (Rules, paragraph 3(b)(xiii))" because the hard copy version supplied to the Center was missing page 25. This problem was a printing and collation problem. In the electronically submitted original Complaint, Complainant agreed to submit to the jurisdiction of the appropriate courts in Virginia (Complaint, part VIII, paragraph 15). The Panelist has independently reviewed the other Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.
No formal deficiencies having been recorded, on June 13, 2001, a Corrected Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of August 2, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís Whois confirmation, by post/courier to the indicated postal address and by facsimile to the indicated facsimile number. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On August 15, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.
On August 20, 2001, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2001-0742 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horningís Statement of Acceptance and Declaration of Impartiality and Independence was received on August 21, 2001. On August 22, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was September 5, 2001.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.
The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules and without the benefit of any Response from Respondent.
4. Factual Background
Complainant is the owner of record of various U.S. trademarks, which it has used in connection with the operation of an automobile insurance products business since 1936. The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:
GEICO DIRECT LINE
January 25, 2001
Complaint, Annex 4.
The Respondent registered the domain name <geicodirect.org> on December 20, 1999 (Complaint, Annex 1). At the time of the submission of the dispute to the Panelist the <geicodirect.org> website registered by Respondent resolved to a site containing criticism of GEICO's business practices. Respondentís website, entitled "Beware of GEICO," complains that GEICOís actions cost her "thousands of dollars." Respondent also announces on her website the initiation of the present proceedings, and advises viewers that her story and website can also be found at <geico-vs-taylor.org>.
Complainant wrote to Respondent by letter dated February 23, 2001, advising Respondent that, in its view, Respondentís registration was in violation of Complainantís trademark and other rights (Complaint, Annex 6). Respondent replied on February 28, 2001 (Complaint, Annex 7). A further exchange of letters then ensued (Complaint, Annexes 8-12), resulting in a final response from Respondent dated April 23, 2001 (Complaint, Annex 13). In her lengthy final letter, Respondent denied that her registration and use of the domain name infringed Complainantís rights, and offered various justifications for her actions primarily related to her criticism of Complainantís business practices.
5. Partiesí Contentions
Complainant contends that Respondent has registered a domain name which is identical to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The Panelist finds that domain name at issue is identical to Complainantís marks (Motorola, Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079); (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik_Danismanlik Ltd., NAF Case No. FA0002000093679).
Complainant has alleged and Respondent has failed to deny that it has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. The use of a domain name which incorporates Complainantís mark is not a legitimate use of the mark. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279. The Panelist finds that Respondent has no rights or legitimate interest in the domain name.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
There is no proof that Respondent has offered to sell, rent or transfer the subject domain name for profit. This dispute does not fall within the parameters of paragraph 4.b(i).
Respondentís registration of the domain name prevents GEICO from reflecting its registered marks in a corresponding "DOT ORG" domain name, thus preventing Complainant from making full commercial use of its trademarks. There is no proof, however, that Respondent has engaged in a pattern of such conduct and this dispute does not fall under paragraph 4.b(ii).
Respondentís registration can be said to have been undertaken to disrupt the business of GEICO, given Respondentís criticism of GEICOís business practices. Respondent is not, however, a competitor of GEICO. This dispute does not arise under paragraph 4.b(iii).
Although there is clearly a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of Respondentís website, Respondent has not attempted to attract users to her site for commercial gain. This matter does not fall within the traditional parameters of paragraph 4.b(iv).
It is clear that this matter does not fall neatly within the confines of the enumerated "without limitation" circumstances consisting bad faith. However, as the Policy itself makes clear, the enumerated circumstances are examples, without limitation. To establish bad faith in this matter, one must turn to the growing body of domain name arbitration precedent where panelists have considered the use of domain names identical to registered trademarks, where the registrant uses the mark to attract users to a site where the trademark owner, and its business practices, are criticized.
There can be little doubt that Respondent has a right to develop a website whose purpose and intent is to criticize GEICO and its business practices, even when the domain name of the critical website includes a root which is identical to a trademark. See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case No. D2000-1104. What Respondent may not do, however, is use a domain name identical to a registered trademark as a home for her campaign of criticism against the trademark owner. GEICOís long history as a provider of insurance in the United States, and its well-known advertising campaign, results in a substantial likelihood that the casual internet user who types in the domain name identical to the trademark <geicodirect.org> will do so thinking that he or she is being taken to a site sponsored by, or affiliated with, GEICO.
Ample prior precedent supports the conclusion that Respondentís use of <geicodirect.org>, a registered trademark of Complainant, as a vehicle to engage in criticism of GEICO, constitutes "bad faith" under the Policy. See, e.g., People for the Ethical Treatment of Animals v. Doughney, 113 F.Supp. 2d 915 (E.D.Va 2000), affirmed 2001 U.S. App. Lexis 19025 (4th Cir. 2001); DFO v. Christian Williams, WIPO Case No. D2000-0181; Compaigne de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299.
"The right to express oneís views is not the same as the right to use anotherís name to identify oneís self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify oneís self as the New York Times or Time Magazine." Monty and Pat Roberts v. Bill Keith, supra.
As Respondent herself has recognized, in registering and using <geico-vs-taylor.org> as a domain name, there are other more appropriate domain names to employ to carry out her criticism of GEICOís business practices.
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name <geicodirect.org> be transferred to the Complainant.
Richard Allan Horning
Dated: September 4, 2001