WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Eric Ehmer
Case No. D2011-0035
1. The Parties
Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America, represented by the law firm Burns & Levinson LLP, United States of America.
Respondent is Eric Ehmer of Bay Shore, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <geicobowl.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 7, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 7, 2011 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Response was filed with the Center on January 9, 2011.1
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 11, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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
Complainant is a private insurance company in the United States of America that, despite its name, offers insurance products to the general public. It is a well-known insurance provider in the United States under the acronym GEICO. Complainant holds at least five trademarks that incorporate the GEICO acronym that are registered on the principal register of the United States Patent and Trademark Office (USPTO). The earliest of those identified in the Complaint was registered in 1964. Complainant, under the GEICO name, advertises prominently and often in the United States, including advertising during telecast of major sporting events. Complainant’s principal website is “www.geico.com”.
Respondent is an individual who resides on Long Island, New York, United States of America. He registered the disputed domain name in September 2010. This website currently resolves, as it has since registration, to a page consisting of “sponsored listings” to Complainant, other insurance companies, and other commercial activities related to automobiles or insurance, on one side of the page. The other half of the page is devoted to services offered by Godaddy.com, the Registrar with which the disputed domain name is registered.
The parties exchanged electronic mail communications in December 2010, with each asserting the arguments that it advances in this proceeding.
5. Parties’ Contentions
The Panel summarizes Complainant’s contentions as follows:
Complainant has many trademarks that incorporate the acronym GEICO that are registered with the USPTO. The disputed domain name is confusingly similar because its dominant feature is GEICO followed by a common word, bowl. Confusion is particularly likely given the timing of Respondent’s registration of the disputed domain name. There are many post-season football matches in the United States called bowls and Complainant advertises frequently on the telecast of such events. “Bowl Season” begins in late November.
Complainant has never authorized Respondent to use the disputed domain name and Respondent has never been commonly known by any designation that includes GEICO. Respondent’s use of Complainant’s trademark combined with “bowl” reveals an intent to capture Internet users who are seeking Complainant into thinking that Complainant might sponsor a bowl game (as many companies do in the United States). Such activity is not legitimate under the Policy.
The use to which the disputed domain has been put, a page containing hyperlinks to Complainant and Complainant’s competitors, fits the example of evidence of bad faith set forth in paragraph 4(b)(iv) of the Policy. Respondent collects click-through advertising revenues from this particular web page. Respondent’s claim that he registered the disputed domain name to promote a fictional character (discussed below) is pretextual, and Respondent has not provided any evidence of “demonstrable preparations” to use the disputed domain name for this purpose. Complainant’s mark is famous and Respondent cannot deny knowledge of it.
The Panel summarizes Respondents’ contentions as follows:
Respondent registered the disputed domain name to promote a fictional character he is creating called the Geicob (pronounced Gike-ub) Owl. This bears no relation to “GEICO bowl” and thus does not interfere with Complainant or its marks, all of which relate to insurance.
Respondent has never benefited financially from links or advertisements at the website to which the disputed domain name resolves. Respondent does not pay for hosting. Presumably the Registrar receives any click-through revenues generated by the site.
Complainant has never sponsored a college bowl game. An Internet search for Geicob Owl yields results unrelated to Complainant or to insurance. Respondent never offered the disputed domain name for sale to Complainant or anyone else.
6. Discussion and Findings
A. Identical or Confusingly Similar.
This first Policy element has two components. Complainant must establish that it holds a trademark or service mark that identifies its goods or services, and then demonstrate that the disputed domain name (without considering the top level main identifier, in this case, .com) is identical or confusingly similar to that mark. Respondent does not contest the fact that Complainant holds many USPTO-registered trademarks that incorporate GEICO. Unlike (for example) a trademark infringement action in the United State of America, confusing similarity under the Policy is determined by a visual and aural examination of Complainant’s mark and Respondent’s domain name; actual confusion need not be proven. A long line of decisions under the Policy holds that when the dominant feature of the disputed domain name is the mark at issue, addition of a common word, such as bowl, does not obviate confusion. Complainant has established this Policy element.
B. Rights or Legitimate Interests.
Paragraph (4)(a)(ii) of the Policy requires Complainant to prove a negative, that Respondent lacks rights or a legitimate interest in the disputed domain name. That is done, as Complainant here has done, by Complainant’s making a prima facie case that Respondent lacks rights or legitimate interest, at which point the burden of production shifts to Respondent to demonstrate the contrary. Respondent does not contest Complainant’s allegation that it never licensed Respondent to use its mark, but seeks shelter in the safe harbor of paragraph 4(c)(i) of Policy, which provides as an example of a means to show a right or legitimate interest that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” As with the other examples in paragraph 4(c), such a showing makes out a defense “if found by the Panel to be proved based on its evaluation of all evidence presented. “
Respondent’s bare assertion that he intends someday to use of the site to promote the Geicob Owl does not establish a legitimate interest. As Complainant argues, paragraph 4(c)(i) requires a showing of either actual use for the claimed legitimate purpose, or “demonstrable preparations” to do so, prior to notification of the dispute. All the Panel has to consider in this proceeding is Respondent’s statement, unsupported by any evidence. The Policy requires proof of use or demonstrable preparations to use and Respondent has provided none. Complainant has proven this Policy element.
C. Registered and Used in Bad Faith.
The format of the web page to which the disputed domain name resolves supports Respondent’s assertion that its content, including the hyperlinks to Complainant and its competitors, was chosen by the Registrar and not by Respondent. Half the page promotes the Registrar’s services, which are in no way related to insurance. That the Registrar made the choice, however, does not necessarily absolve Respondent of responsibility for the site’s content. Though not a universal rule of decision,2 most panels that have addressed the question have held that a respondent does bear responsibility for software-generated links employed by a registrar. See, e.g., NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079; Grisoft, s.r.o. v. Original Web Ventures Inc.; WIPO Case No. D2006-1381; Express Scripts, Inc. v. Windgather Investments Limited/Mr Cartwright; WIPO Case No. D2007-0268; Masai S.A. v. Peter Coleman; WIPO Case No. D2007-0509. Panels that have developed and followed this approach have cited standard principles of agency (a principal is ordinarily responsible for the acts of his agent) and the fact that registrar-generated links is a common practice, one of which most domain name registrants are well aware, and one to be expected unless the registrant takes affirmative steps to prevent it. Respondent here was aware of this practice and its likely consequences; he acknowledges that such links were to be expected if he wasn’t to pay a higher rate for hosting.
One other fact makes application of this approach appropriate in this proceeding: the mark at issue is distinctive and not an everyday word or phrase. GEICO is an acronym, a coined term that is today known primarily as an identifier of Complainant’s products and services. There is or could be no contention that Respondent selected the disputed domain name for its value as a generic term or random combination of letters. Compare Hertz System, Inc. v. Kwan ming Lee, WIPO Case No. D2009 -1165, involving <hzcar.com>, and Admiral Insurance Services Limited v. Mr Adam Dicker; WIPO Case No. D2005-0241 <elephant.com>, with Grisoft, s.r.o. v. Original Web Ventures Inc.; WIPO Case No. D2006-1381 <avg.com>, and NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, supra <cbs42.com>. The only innocent alternative suggested, Respondent’s avian explanation, fails for lack of evidence.
The Panel thus follows the majority rule that Respondent is responsible for the links on the web page at the disputed domain name. Since the content at the web page to which the disputed domain name resolves has included the hyperlinks at all relevant times, it follows from this that Complainant has demonstrated that Respondent registered and used the disputed domain name in bad faith. Respondent does not (and in this Panel’s view could not credibly) deny knowledge of Complainant and its marks at the date of registration, and could (and in this Panel’s view in fact did) expect commercial exploitation of them so long as he maintained a parked (Respondent’s word) page.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <geicobowl.com> be transferred to Complainant.
Richard G. Lyon
Dated: February 16, 2011
1 This date is correct. Respondent did in fact submit his Response two days before formal notification of the Complaint. As required by the Rules, paragraph 2(h)(iii), Complainant had served Respondent with a copy of the Complaint simultaneously with filing it with the Center. Upon receipt of Respondent’s communication including the Response, the Center advised that Respondent was under the Rules given twenty days from formal notification to respond. In future communications between Respondent and the Center, the Center again advised Respondent of this, and requested and received Respondent’s confirmation that the originally filed response be treated as the Response in this proceeding.