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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Contact Privacy Inc. Customer 1241497884 / Health Feather, All Natural Health Products Producing Better Health

Case No. D2017-1577

1. The Parties

Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America (“United States”), represented by Burns & Levinson LLP, United States.

Respondent is Contact Privacy Inc. Customer 1241497884 of Toronto, Ontario, Canada / Health Feather, All Natural Health Products Producing Better Health of Lake Wales, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <geico365.com> is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2017, 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 Complainant on August 21, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed two amended Complaints successively on August 22, 2017, and September 6, 2017.

The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2017.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 12, 2017. 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

Complainant is an insurance company that has provided insurance services since 1936. Complainant currently has over 30,000 employees, and provides insurance for over 22 million vehicles. Complainant is the owner of several marks that include the term GEICO, including among others, United States Registration No. 763,274 (registered on January 14, 1964); United States Registration No. 2,601,179 (registered 2002); United States Registration No. 1,442,076 (registered on June 9, 1987) for GEICO DIRECT; and United States Registration No. 2,982,260 (registered on February 15, 2005) for GEICO AUTO REPAIR XPRESS.

Complainant is also the registrant of the domain name <geico.com> and operates a website at “www.geico.com” to inform customers about its GEICO mark and its insurance services and products.

The disputed domain name <geico365.com> was registered on July 2, 2017. Respondent has no affiliation with Complainant. Prior to the time the Complaint was filed, Respondent was using the disputed domain name to resolve to a website making use of Complainant’s trademark purporting to sell Complainant’s insurance products, and also displaying sponsored links to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. The website was later made inactive. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) <geico365.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. In particular, Complainant contends that it has a well-known mark and that it has registrations for GEICO as well as various iterations of GEICO with other added terms. Complainant contends that Respondent has merely used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its services, but that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <geico365.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark GEICO, and merely adds the number “365”.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example,General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter-Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). Furthermore, the number “365” when added to a complainant’s registered mark, has been found not to make it less “identical or confusingly similar.” See F. Hoffmann-La Roche AG v. Marina Kovtun, WIPO Case No. D2016-0852 (transferring <accutane365.click>); citing Lego Juris A/S v. shenglan li, WIPO Case No. D2012-0373 (transferring <365lego.com> and finding that 365 is a “term commonly referring to 365 days in a year […].”)

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has in the past used the disputed domain name to resolve to a website purporting to offer Complainant’s insurance products, and displaying sponsored links to websites that are unaffiliated with Complainant or Complainant’s services. To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of the UDRP, inasmuch as Respondent may in fact be offering GEICO services or products, the information on the website at the disputed domain name, including a veiled disclaimer, associated with the use of disputed domain name does not establish that, and there is insufficient evidence of record to establish the other criteria set out by prior WIPO panels for establishing Respondent’s rights or legitimate interests. See section 2.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (discussing when an authorized reseller maybe considered to have rights or legitimate interest in a mark);see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (denying transfer <okidataparts.com>); Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (transferring <experiancredit.com> et al.). Notably, the display of sponsored links to third-party goods unrelated to those of Complainant does not support a finding that Respondent is using the disputed domain name in relation to a bona fide offering of goods or services for the purposes of the Policy.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. Given the nature of the site content and the disputed domain name which incorporates Complainant’s mark, the Panel finds strong evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. The Panel finds that the addition of “365” to Complainant’s trademark could be perceived by Internet users as descriptive of a website where they could find information “365 days a year” about products or services related to Complainant’s GEICO products and services. Accordingly, consumers would likely expect to find information offered by Complainant on such a website. This is particularly so, since Complainant owns several trademarks that incorporate GEICO along with other terms. Paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. Based on the use of the disputed domain name outlined above, the Panel finds that Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <geico365.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: October 21, 2017

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