WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. PPA Media Services, Ryan G. Foo
Case No. D2012-1486
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 PPA Media Services, Ryan G. Foo of Santiago, Chile.
2. The Domain Names and Registrar
The disputed domain names <giecoc.com> and <giekco.com> (the “Disputed Domain Names”) are registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 21, 2012. On July 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2012.
The Center appointed Charné Le Roux as the sole panelist in this matter on September 7, 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 types of insurance services that the Complainant 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 Names were registered on July 30, 2007, and August 12, 2005, respectively. The Disputed Domain Names both resolve 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. and that 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 Names are confusingly similar to its GEICO trade mark. It submits that the misspelling of the trade mark GEICO as “giecko” in the one Disputed Domain Name does not create any distinction with its trade mark because it is phonetically identical. It also submits that the spelling of “giecoc” in the other Disputed Domain Name, with one extra letter at the end, was a clever attempt to capture Internet users who mistakenly type a variation or misspelling of the GEICO trade mark or the <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 Names in that:
a) the Respondent has no affiliation with the Complainant and has not been authorized by it to use the Disputed Domain Names;
b) the Respondent has not been commonly known by the Disputed Domain Names;
c) the Respondent is only using the Disputed Domain Names 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 Names was no accident, because they are not names 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 Names were registered and are being used in bad faith.
The Complainant submits that the Respondent registered the Disputed Domain Names with knowledge of its rights in the GEICO trade marks and that it was inconceivable that it 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.
The Complainant also contends that the Respondent’s listing of a non-functioning email address as its only contact information in the publicly available WhoIs database (demonstrated by the delivery failure notice that the Complainant received pursuant to sending correspondence in connection with this Dispute to the Respondent), is indicative of bad faith.
The Complainant further indicates that the Respondent was ordered to transfer domain names in two previous UDRP proceedings with findings of bad faith made against it in both decisions. It refers to the cases of Petroleo Brasileiro S.A. – Petrobras v. PPA Media Services, Ryan G. Foo / Private Whois desafiopetrobras.com, WIPO Case No. D2012-0655; and Inter-Continental Hotels Corporation v. Fundacion Private Whois Domain Administrator and PPA Media Services, WIPO Case No. D2012-1095. The Complaint submits that the Respondent engages in a pattern of conduct.
As a final indication of the Respondent’s bad faith, the Complainant refers to the links on the website attached to the Disputed Domain Names 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 Names be transferred to it.
The Respondent has not 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 Names are 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 Names;
iii) That the Disputed Domain Names have been registered and are 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 trademark 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 Names. The test involves a straightforward visual or aural comparison of the trade mark with the alphanumeric strings in the Disputed Domain Names. For the purposes of this procedure the comparison is thus principally between the mark GEICO and the words “giecoc” and “giekco”. As none of these words have any particular meaning, the Panel reasons that 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 phonetically virtually identical in the Complainant’s trade mark and the Disputed Domain Names. The only difference between them lies with the addition of a single letter, namely “c” in the case of “giecoc” and “k” with regard to “giekco” in the last syllables of the Disputed Domain Names. The Panel finds that these differences between the trade mark GEICO and the Disputed Domain Names are 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 Names 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 may rebut this by coming forward with sufficient allegations or evidence demonstrating its rights or legitimate interests in the Disputed Domain Names. The Respondent has not filed a response and does not offer any explanation for its selection of the Disputed Domain Names.
Furthermore, the Respondent only used the Disputed Domain Names for a pay-per-click website, in the Panel’s view, clearly with the intention to generate an income from them. While 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 Names are based on the trade mark value of the Complainant’s trade mark, negates the legitimacy of such activity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 2.6, in this regard.
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 trading and promotional activities prior to the registration of the Disputed Domain Names in August 2005 and July 2007, and its own domain name and trade marks for and comprising GEICO, are not in dispute and these could surely not have gone unnoticed by the Respondent. Its selection of two domain names that are both confusingly similar to the Complainant’s GEICO trade mark, its use of the Disputed Domain Names in connection with a website offering services that directly compete with that of the Complainant and its default in filing a Response, leaves the Panel in little doubt about its absence of good faith. The Respondent’s previous registration of domain names in bad faith, found by the panels in the cases referenced by the Complainant is indicative, in itself, of bad faith conduct.
The Panel finds that the Complainant has made out a case as required in terms of paragraph 4(a)(iv) of the UDRP Policy, which the Respondent has not answered. Taking all the undisputed facts into consideration, the Panel is persuaded that the Respondent registered and is using the Disputed Domain Names intentionally to attract Internet users to its 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 Names 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 Names <giecoc.com> and <giekco.com> be transferred to the Complainant.
Charné Le Roux
Dated: September 18, 2012