WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GOVERNMENT EMPLOYEES INSURANCE COMPANY v. Michael Gonzalez
Case No. D2011-1130
1. The Parties
Complainant is GOVERNMENT EMPLOYEES INSURANCE COMPANY of Chevy Chase, Maryland, United States of America represented by Burns & Levinson LLP, United States of America.
Respondent is Michael Gonzalez of Naples, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <geicohosting.com> and <geicohosting.net> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2011. Complainant states in the Complaint that Respondent was served with the Complaint. On July 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of both domain names 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 by email and sent to the address on file with the Registrar, and the proceedings commenced on July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 28, 2011.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on August 2, 2011. 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 factual background is taken from the allegations contained in the Complaint and the exhibits annexed thereto none of which have been contested by Respondent.
Complainant is an insurance provider incorporated under the laws of the State of Maryland, United States of America (“U.S.”). Since 1936, Complainant has provided insurance services under the acronym GEICO. The company owns valid and subsisting U.S. trademark registrations for the mark GEICO or marks that include the term GEICO for insurance related services and other services which registrations date back to 1964. The company maintains a website at the URL “www.geico.com”. At the website, consumers can manage existing policies, make payments, record or track claims and get free insurance quotes among other services.
The disputed domain name <geicohosting.net> was created on January 14, 2011. At the time the Complaint was submitted, the disputed domain name connected to a web page provided by the Registrar GoDaddy. The web page consists of third party ads including for auto insurance, homeowner’s insurance, and rental car coverage, among other things.
The disputed domain name <geicohosting.com> was created on March 28, 2009. At the time the Complaint was submitted, the disputed domain name was associated with a website that allegedly provides web hosting. The Panel determined that the phone number provided on the contact page of the website is not functioning. The website also has various peculiarities including numerous typographical errors, and incomplete or phantom addresses which taken together suggest that the web page, or more precisely the business being advertised on the web page, is a sham.
Complainant contacted Respondent prior to bringing this action, demanding the transfer of the disputed domain names. There does not appear to have been any written response to that letter.
5. Parties’ Contentions
Complainant makes the following contentions:
1 Complainant is the owner of the trademark GEICO or marks that incorporate the trademark GEICO which registered rights date back to at least as early as 1964. Complainant contends that its common law rights in the GEICO mark date to 1936.
2 The disputed domain names are confusingly similar to the GEICO trademark.
3 Respondent has no rights to or legitimate interests in the disputed domain names because Respondent has no affiliation of connection with Complainant, has not received any license or consent to use the GEICO marks, has never been known by the disputed domain names, is not using the disputed domain names in connection with any legitimate or bona fide interest and that the purpose of registering the disputed domain names was to misappropriate Complainant’s rights.
4 Respondent registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent was on constructive notice of Complainant’s trademark rights based on Complainant’s federal trademark registrations, that Respondent had actual notice of Complainant’s rights in the GEICO mark as a result of Complainant’s extensive use of the GEICO name, that Respondent is using the <geicohosting.net> domain name to post ads and link to competing websites for its commercial benefit, and that the existence of <geicohosting.net> and <geicohosting.com> suggests a pattern of registering domain names that belie any allegation of good faith.
Respondent did not submit a written response to the Complaint. It is alleged that a representative of Complainant had a phone conversation with Respondent during which Respondent claimed that his registration of the disputed domain names was legitimate. Complainant has offered no other details of the conversation including whether Respondent articulated his claim of legitimacy and Respondent has failed to provide the basis for that claim in response to the Complaint. Accordingly, the Panel must decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to each of the disputed domain names; and (iii) each of the disputed domain names has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant is no stranger to the UDRP process having used it to recapture numerous domain names that include GEICO or misspellings of the GEICO mark. Numerous panelists have previously found that Complainant has rights in the GEICO trademark and the evidence provided with the Complaint, notably the U.S. federal trademark registrations for GEICO, leads the Panel to the same conclusion. Further, the rights in the GEICO mark appear to long predate any rights that Respondent may claim to own in the disputed domain names. Indeed, Respondent does not contest the fact that Complainant is the owner of prior rights in the GEICO mark. Accordingly, Complainant satisfies the first component of the first Policy element, namely, establishing that it holds trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP questions (noting consensus view that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights); Owens Corning Fiberglas Technology, Inc. v. Hammerstone, WIPO Case No. D2003-0903 (according determination of the United States Patent and Trademark Office (USPTO) to register a trademark due deference).
As to the second component of this first element, namely, whether each of the disputed domain names is identical or confusingly similar to the GEICO mark, Respondent has added the non-source identifying term “hosting” to Complainant’s GEICO trademark. While the term “hosting” does not immediately conjure up services that Complainant might provide (in contrast, for example, to words such as “claim” or “coverage”) and is not a term that would generally be associated with Complainant, because both disputed domain names do incorporate in their entirety the GEICO trademark and because the GEICO trademark is the dominant and only source identifying feature of the disputed domain names, Complainant has established this Policy element. eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307.
B. Rights or Legitimate Interests
Although Respondent has defaulted, the burden of proof remains on Complainant to establish the absence of rights or legitimate interests in the disputed domain names.
As to both disputed domain names, Complainant has alleged without contradiction that Respondent is not authorized to use the GEICO mark, that Respondent is not commonly known as GEICO and that there is no legitimate noncommercial use of the disputed domain names. With respect to the disputed domain name <geicohosting.net> the only identified use of that domain name is in connection with the parked web page that provides sponsored links including links to other entities in the insurance business. Numerous panelists have repeatedly determined that such use does not constitute a bona fide offering of goods or services. See Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 and cases cited therein. These facts establish a prima facie case that Respondent does not have rights or legitimate interests in the <geicohosting.net> domain name which Respondent has failed to overcome.
As to the disputed domain name <geicohosting.com>, in order for this use to be deemed legitimate, Respondent must be making a bona fide offering of goods or services at the website. Yet a review of the website shows that this is not likely to be the case. The phone number listed on the website does not connect to any business. As Complainant has also pointed out, this site sets forth an address in San Francisco that does not exist and there is no evidence that Respondent has registered to do business with any state authority under the GEICO name. Further, GEICO is uniquely associated with and serves as an acronym exclusively for Complainant. Thus, Respondent would be hard pressed to identify any type of legitimate use that it could make of this name for any business. Nor does the website support a claim that the disputed domain name is being used in connection with a legitimate business. Indeed, the website, replete with typographical and grammatical errors, incomplete addresses and a non-working phone number appears to be the antithesis of a legitimate business. Respondent had an opportunity to identify or clarify the allegedly legitimate use it was making of the domain name in response to the initial demand letter sent by Complainant and in response to the Complaint. By defaulting, Respondent has failed to establish its rights or legitimate interests or to overcome the prima facie showing made by Complainant. As such, Complainant has satisfied this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth various circumstances that can give rise to and otherwise constitute evidence of registration and use of a domain name in bad faith. Although the Policy identifies activities that constitute bad faith use and registration, the list set forth in paragraph 4(b) of the Policy is not exhaustive. United Feature Syndicate, Inc. v. Takeshi Komaba, WIPO Case No. D2002-0901.
The evidence shows that the disputed domain names were both registered after Complainant had adopted and used the GEICO mark and after Complainant obtained U.S. federal trademark registrations for its GEICO mark. Further, the record is bereft of any explanation, including a reasonable one, for the selection of the GEICO name by Respondent. Nothing in the record would support a conclusion that the term was adopted in good faith.
Respondent is using the disputed domain name <geicohosting.net> in connection with a website containing sponsored links. It is well established that the use of a parking page with sponsored links is strong evidence of bad faith. While it is not likely that Respondent chose the advertisements appearing on the parking page (and Complainant’s suggestion that Respondent did choose the ads seems to be without evidence and contrary to the manner in which parking pages generally work), that is of no consequence. Certainly, Respondent knowingly agreed to register the disputed domain name with a company that provides parking pages and that provides sponsored links on those parking pages. Further, it cannot be disputed that Respondent was aware that the parking company would generate advertisements of some sort at the website associated with the disputed domain name and that Respondent would benefit from this advertising. There is little doubt that Respondent and/or the parking company are commercially benefitting from the use of Complainant’s trademark. This satisfies the requirements of paragraph 4(b)(iv) of the Policy. See Government Employees Insurance Company v. Eric Ehmer, WIPO Case No. D2011-0035; Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474. Further, Respondent’s website has the possibility of diverting Internet users to websites that may be offering competing insurance services which could divert actual business away from Complainant. Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 and cases cited therein.
As for the disputed domain name <geicohosting.com>, it is difficult to find that in using the disputed domain name Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion since the business that is being promoted at the website associated with the <geicohosting.com> domain name does not seem to be legitimate and there appear to be no advertisements on it generating income for Respondent. In fact, the use of the disputed domain name <geicohosting.com> does not appear to fit within any of the illustrative examples of bad faith set forth in the Policy at paragraph 4(b). There is no evidence that Respondent has ever attempted to sell or transfer the disputed domain name to Complainant. There is no evidence that Respondent took the disputed domain name to prevent Complainant from reflecting the mark in a corresponding domain name and indeed Complainant owns the domain name <geico.com>. There is no evidence that Respondent is a business competitor of Complainant and took the disputed domain name to disrupt Complainant’s business. And there is no indication of any type of commercial gain from the use of the disputed domain name. Complainant does not address the bad faith use and registration of <geicohosting.com> separate from <geicohosting.net>. Yet the mere fact that Respondent may have exhibited bad faith use and registration in connection with <geicohosting.net> does not automatically bestow bad faith with respect to <geicohosting.com.>
What does show bad faith, however, is the very domain name itself. As noted by a prior panelist, Complainant’s mark 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.” See Government Employees Insurance Company v. Eric Ehmer, WIPO Case No. D2011-0035. It is because (a) there is no reason for Respondent to be using the GEICO name; (b) there is no relationship between the GEICO name and the alleged business of Respondent at the <geicohosting.com> domain name; and (c) there is no relationship between the Parties that bad faith is found here. Quite simply, an examination of these facts suggests that the disputed domain name could not have been chosen for any reason other than to deliberately create a false sense of origin or sponsorship. See Harrods Limited v. Peter Lorner, WIPO Case No. D2003-0504.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <geicohosting.com> and <geicohosting.net> be transferred to Complainant.
Barbara A. Solomon
Dated: August 5, 2011