WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. Calvin Budley, Whois Privacy Services Pty Ltd.
Case No. D2012-1306
1. The Parties
The Complainant is Government Employees Insurance Company (“GEICO”) of Chevy Chase, Maryland, United States of America (“U.S.”) represented by Burns & Levinson LLP, U.S.
The Respondent is Calvin Budley of Manchester, United Kingdom of Great Britain and Northern Ireland (“U.K.”) and Whois Privacy Services Pty Ltd. of Fortitude Valley, Australia.
2. The Domain Name and Registrar
The disputed domain name <geice.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2012. On June 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 29, 2012, 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 16, 2012 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 20, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2012.
The Center appointed Charné Le Roux as the sole panelist in this matter on August 24, 2012. 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 U.S. insurance company that has provided insurance services since 1936. The type of insurance services that it offers include automobile and motorcycle insurance. The Complainant trades under the name GEICO and has registered with the USPTO not only the mark GEICO, but also GEICO DIRECT and GEICO MOTORCYCLE, with the first registration dated January 1964. The Complainant has over 9 million customers and insures more than 16 million vehicles. It has over 24,000 employees and is the fastest growing auto-insurer in the U.S. The Complainant conducts its business from the website located at “www.geico.com”.
The Disputed Domain Name was registered on November 17, 2003. The website of the Disputed Domain Name resolves to a website at “www.outstandingautoinsurance.com” which is a pay-per-click website, showing sponsored links for different automobile insurers or direct links to them.
5. Parties’ Contentions
The Complainant submits that as the fastest growing auto-insurer in the U.S., it has made extensive use of its GEICO trade mark. It contends that it has provided insurance services since 1936 and that, as a consequence of the large sums that it invests to promote and develop its mark through television, print media and the Internet, the GEICO mark has become uniquely associated with it and its services. The Complainant advises that its registered trade marks include its first registration for GEICO in January 1964, with subsequent registrations for the marks GEICO DIRECT and GEICO MOTORCYCLE obtained in June 1987, June 1997, July 2002, and July 2007, respectively.
The Complainant contends that the Disputed Domain Name is confusingly similar to its GEICO trade mark. It submits that the misspelling of the trade mark GEICO as “Geice” in the Disputed Domain Name does not create any distinction with its trade mark. It also submits that the misspelling was a clever attempt to capture Internet users who mistakenly type a variation or misspelling of the GEICO trade mark or <geico.com> domain name. The Complainant argues that the Disputed Domain Name will create the impression with Internet users that the website attached to it is associated with the Complainant.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent has no affiliation with the Complainant and has not been authorized by it to use the Disputed Domain Name;
b) the Respondent has not been commonly known by the Disputed Domain Name;
c) the Respondent is only using the Disputed Domain Name to collect pay-per-click advertising revenue based upon an association with the Complainant and its widely recognized insurance services; and
d) the Respondent’s misappropriation of the Disputed Domain Name was no accident, because it is not a name that it would legitimately choose in connection with insurance services, unless it was seeking to create an impression of association with the Complainant.
The Complainant further submits that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent indicated in correspondence with the Center that he is connected to a company called “GE ICE”. The Complainant provided email correspondence wherein the Respondent makes this statement in reaction to the original complaint filed by the Complainant and wherein he also denies that he has any association with the other domain names referred to in the original complaint. The original complaint included the domain names <geic.com>, <geigo.com>, <giego.com>,
<geice.com>, <giecoc.com>, <giecocreditcards.com>, <giekco.com>, but the amended Complaint only included the Disputed Domain Name <geice.com>. The Respondent also indicates in the said correspondence that “GE ICE” monetizes the Disputed Domain Name through a third party service provider and that he intends to demonstrate his rights in the UDRP Response. The Complainant uses this communication to support its claim that the Respondent has only used the Disputed Domain Name for reasons to collect click-through fees from advertisements for competitor insurance sites. The Complainant advises that it could not locate any information about a company called GE ICE and that the Respondent’s contention that he trades under the name “GE ICE” is a mere pretense to hide his bad faith registration and use of the Disputed Domain Name.
The Complainant submits that the Respondent registered the Disputed Domain Name with knowledge of its rights in the GEICO trade marks and that it was inconceivable that he could not have been aware of these rights, since the Complainant engages in extensive advertising, including television advertising, featuring its name and mark throughout the U.S. The Complainant argues that a simple Internet search would have revealed the Complainant’s use of the GEICO marks to identify its services and that the Respondent had constructive notice of the Complainant’s trade mark rights.
As a further indication of the Respondent’s bad faith, the Complainant refers to the links on the website attached to the Disputed Domain Name to websites offering competing services with that of the Complainant. The Complainant referred to specific large insurance companies to which some of the links listed on the website lead to.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent has not formally responded to the Complaint.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in the proceeding, the Complainant must prove on a balance of probabilities:
i) That the Disputed Domain Name is identical of confusingly similar to a mark in which it has rights;
ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) That the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant owns both common law and registered rights in the trade mark GEICO as well as the marks GEICO DIRECT and GEICO MOTORCYCLE.
In order to satisfy the test of confusing similarity, the GEICO trade mark would generally need to be recognizable as such within the Disputed Domain Name. The test involves a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the Disputed Domain Name. For the purposes of this Dispute, the comparison is thus principally between the mark GEICO and the word “Geice”. As neither of these words have any particular meaning, Internet users who seek the Complainant’s goods or services on the world wide web will rely on the dominant visual or aural elements in the Complainant’s mark, being the first syllable of “Gei”. This element is identical in the two marks. The only difference between them lies with the letters “o” and “e” in the last syllables. The Panel finds that this difference between the trade mark GEICO and the Disputed Domain Name is not sufficient to escape a finding of confusing similarity. The first requirement of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy.
In terms of the Policy, once the Complainant has made a prima facia case that the Respondent lacks rights or legitimate interests, the Respondent has to come forward with sufficient allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent has not filed a response and other than the unsupported allegations in the email correspondence referred to under 5.A above does not offer any explanation for his selection of the Disputed Domain Name.
Furthermore, up to the date of the Complaint, the Respondent only used the Disputed Domain Name for a pay-per-click website, with the intention to generate an income from it. The Respondent’s admission that he uses the Disputed Domain Name to monetize it is not part of any formal Response, but the Panel accepts it as part of the evidence filed by the Complainant, which has not been contradicted by the Respondent or otherwise. While the pay-per-click activity is not in itself indicative of a lack of a legitimate interest, the fact that the links associated with the website attached to the Disputed Domain Name are based on the trade mark value of the Complainant’s trade mark, negates the legitimacy of the said activity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in connection with the Disputed Domain Name.
The second requirement of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The extent of the Complainant’s extensive trading and promotional activities prior to the registration of the Disputed Domain Name in November 2003, and its domain name and trade marks for GEICO are not in dispute and these could surely not have gone unnoticed by the Respondent. His selection of a domain name that is confusingly similar to the Complainant’s GEICO trade mark and his use of the Disputed Domain Name in connection with a website offering services that directly compete with that of the Complainant begs the question.
The Panel finds that the Complainant has made out a case as required in terms of the UDRP, which the Respondent has not answered despite initial indications that he would do so. Taking all the undisputed facts into consideration, the Panel is persuaded that the Respondent registered and used the Disputed Domain Name intentionally to attract Internet users to his website by creating the likelihood of confusion with the Complainant’s trade mark as to the source and affiliation of the Respondent’s website. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
The third requirement of paragraph 4(a) of the Policy has been met.
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 <geice.com> be transferred to the Complainant.
Charné Le Roux
Dated: September 4, 2012