WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. ICS, INC., ICS INC.

Case No. D2019-1923

1. The Parties

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

The Respondent is ICS, INC., ICS INC., United Kingdom, internally represented.

2. The Domain Name and Registrar

The disputed domain name <grico.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2019. On September 3, 2019, the Respondent transmitted an email request for the automatic four-day extension to the Response due date. The same day the Center, granted the automatic four-calendar day extension for response in accordance to paragraph 5(b) of the Rules. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Response was filed with the Center on September 13, 2019.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on September 30, 2019. 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, Government Employees Insurance Company is an American insurance company, incorporated in Maryland, United States that is engaged in providing various types of insurance services including, among others, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, overseas and international insurances. It has been operating and trading in the insurance market sector for almost 80 years, since 1936, under the trademark GEICO, which is its company name acronym.

The Complainant uses the trademark GEICO to identify and promote its services and holds several trademark registrations in United States for the same on a standalone basis or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:

United States Trademark No. 763,274 GEICO, registered on January 14, 1964, in class 36;

United States Trademark No. 2,601,179 GEICO, registered on July 30, 2002, in class 36;

United States Trademark No. 1,442,076 GEICO DIRECT, registered on June 9, 1987, in class 16;

United States Trademark No. 2,071,336 GEICO DIRECT, registered on June 17, 1997, in class 36;

Copies of trademark registration certificates for the above-mentioned trademark registrations of the Complainant have been attached as Annexure-D to the Complaint.

The Complainant has over 17 million policies and insures more than 28 million vehicles. Further, the Complainant has over 40,000 employees and is one of the fastest-growing auto insurers in United States. The Complainant promotes and sells its insurance products and services through its website hosted at the “www.geico.com ”. The Complainant through the said website allows customers to access information regarding their policies, manage their policies and claims, learn more about the Complainant and obtain insurance quotes. A screenshot of the homepage of the Complainant’s website has been attached as Annexure- E to the Complaint.

According to the Registrar’s verification, the disputed domain name, <grico.com> had been registered on January 23, 2003 and currently stands registered in the name of the Respondent. Extracts of the WhoIs records for the disputed domain name have been attached as Annex A to the Complaint. The Respondent in its Response dated September 13, 2019 claimed to have acquired the disputed domain name in November, 2017. As is set out in the Response, the Respondent appears to be a “domainer”, a person in the business of purchasing domain names of potential value for website development, generic advertising, and possibly ultimate resale.

The disputed domain name at the time of filing the Complaint, resolved to a standard registrar parking website featuring pay-per-click (PPC) hyperlinks redirecting Internet users to third-party websites, not affiliated with the Complainant promoting Complainant and the competitors of Complainant. Printouts of a selection of websites to which the disputed domain name resolved, via redirection have been attached as Annexure - F to the Complaint. According to the evidence provided by Complainant, for the disputed domain name <grico.com>, the same is available for sale at USD 6459 on the website of Domain Tools.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <grico.com> incorporates a common or an obvious misspelling of the Complainant’s GEICO trademark which is accompanied with a generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the disputed domain name is confusingly similar to its GEICO trademark, the only difference being that the letter “e” in the Complainant’s trademark is changed into the letter “r” in the disputed domain name. The Complainant further states that the disputed domain name is also confusingly similar to its GEICO trademark as the letters “e” and “r” are next to each other on a normal qwerty- keyboard, the difference between them only being a minor typo goes unnoticed by the average Internet user. The Complainant in this regard has placed reliance on Avid Dating Life Inc. v. Registration Private, Domains by Proxy, LLC / Online Management, WIPO Case No. D2014-0460. The Complainant contends that the disputed domain name intended is intended to be used by the Respondent to impersonate the Complainant and intercept and confuse consumers when looking for bona fide and well-known GEICO products and services or authorized partners.

The Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name <grico.com> as the Respondent has no connection or affiliation to Complainant and has not received any license or consent, whether express or implied to use the Complainant’s GEICO trademark in a domain name or in any other manner. The Complainant also contends that the Respondent has never been known by the disputed domain Name. In support of its said contentions, the Complainant has cited the UDRP decision, Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610.

The Complainant states that the Respondent’s misappropriation of the GEICO trademark in the disputed domain name was no accident. The Complainant contends that where a trademark is famous, as in the instant case, it is not one traders would legitimately choose unless they are seeking to create an impression of an association with the Complainant. The Complainant in this regard has placed reliance on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant argues that the use of the disputed domain name to generate PPC revenue by the Respondent is not “use” in connection with a bona fide offering of goods and services and does not confer it with a legitimate interest in the disputed domain name. The Complainant in support of its contentions has relied on Skyscanner Limited v. Domain May Be for Sale, Check Afternic.com Domain Admin, Domain Registries Foundation, WIPO Case No. D2018-1987.

The Complainant states that the Respondent could have no legitimate interest in the GEICO trademark since it is not a name that Respondent would have legitimately and randomly chosen to use. The Complainant has placed reliance on Telstra Corp. Ltd. v. Nuclear Marshmallows, supra.

The Complainant contends that the Respondent has also registered the disputed domain name <grico.com> in bad faith with knowledge of Complainant’s rights in its GEICO trademark and with an intent to profit off of from those rights. The Complainant states that it is inconceivable that the Respondent was unaware of the Complainant’s rights in the GEICO trademark when it registered the disputed domain name that incorporates obvious misspellings of Complainant’s famous federally registered GEICO trademark.

The Complainant argues that the Respondent had actual notice of Complainant’s rights. The Complainant contends that it has engaged in extensive advertising, including television advertising featuring its name and trademark GEICO and has offices throughout the world. The Complainant states that even a simple Internet search would have revealed that the Complainant’s extensive use of the GEICO trademark as a source identifier. Likewise basic domain name searches and other searches of the USPTO records, which are readily accessible online would have also disclosed the Complainant’s rights in the GEICO trademark. According to the Complainant, the Respondent can be deemed to have constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the GEICO trademark. In this regard, the Complainant cited the UDRP decision, Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. D2000-0090 and Microsoft Corp. v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501.

The Complainant states that the Respondent’s use of the GEICO trademark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so is evidence of bad faith. The Complainant has placed reliance on SANOFI-AVENTIS v. Andris Maupalis, WIPO Case No. D2007-1341.

The Complainant contends that the disputed domain name <grico.com> is advertised for sale for USD 6,459, far in excess of any out-of-pocket expenses directly related to the disputed domain name and this strongly suggests that the Respondent was aware of the Complainant’s trademark and its business when it registered the disputed domain name and that Respondent’s intention in registering the same was for financial gain and was all in bad faith. The Complainant in support of its contentions has relied upon Virgin Enterprises Limited v. Syed Hussain, WIPO Case No. D2012-2395 and Carige Vita Nuova S.p.A. v. Vita Nuova Public Organization, Domain Management / Whois Privacy Services by Domain Protect LLC, WIPO Case No. D2010-1912.

The Respondent’s use of the GEICO trademark amounts to “bad faith”. The disputed domain name <grico.com> is used to generate PPC revenue from hyperlinks to third party businesses providing insurance services, which are competitive to services protected under the Complainant’s GEICO trademark. The Complainant contends that such use of the disputed domain name is an intentional attempt by the Respondent to attract, for commercial gain, Internet users to the website hosted on the said domain name by creating a likelihood of confusion as to the source, sponsorship, and affiliation of the same with the GEICO trademark. The Complainant in this regard relies upon Skyscanner Limited v. Domain May Be for Sale, Check Afternic.com Domain Admin, Domain Registries Foundation, WIPO Case No. D2018-1987.

The Complainant argues that the Respondent’s use of the disputed domain name is to trade upon the goodwill associated with Complainant and its GEICO trademark by leading consumers to believe that Respondent or its websites/services are associated with Complainant. The Complainant states that it is highly likely that consumers looking for legitimate GEICO products and services may be directed to Respondent’s website and might unwittingly transact business with and/or rely on information provided by Respondent assuming its products or services were legitimately associated with Complainant.

Lastly, the Complainant’s contends that the Respondent’s use of the disputed domain name supports a finding of bad faith and that there is no conceivable contemplated use of the disputed domain name that would not be an infringing use by the Respondent. As such, the disputed domain name <grico.com> was being used in bad faith.

B. Respondent

The Respondent, ICS INC., claims to be a technology consultancy company and a domain investor based in the Cayman Islands, British Overseas Territory which has been helping clients in acquiring premium domain names. The Respondent states it holds a portfolio of premium domain names and has registered hundreds of common-word and combined letter domain names for investment and development. The Respondent argues that previous UDRP decisions have found in favour of such a business strategy of domain investing.

Placing reliance on Aurelon B.V. v. Abdul Basit Makrani, WIPO Case No. D2017-1679, the respondent argues that speculation in domain names is a lawful business model regardless of whether the domain names correspond to trademarks, as long as the proof furnished establishes either (i) Respondents have rights or legitimate interests in the domain name; or (ii) Complainants are unable to prove bad faith registration and use.

The Respondent claims that it acquired the disputed domain name <grico.com> in November 2017 from Vision Media Ltd (a company based in Europe) as part of its domain portfolio purchase. The Respondent states it had no knowledge of the Complainant, until the filing of the Complaint in the present proceedings and had also not been aware of it when it first acquired the disputed domain name.

The Respondent contends that the Complainant owns rights to the trademark GEICO only and not “grico” and that while the former could be an inventive word, the latter word is a name for businesses / individuals and also has a generic meaning.

The Respondent submits that the term “grico” forming a part of the disputed domain name is a common first / last name of many individuals and that there are also many companies/businesses around the world which use the said word as their brand name, some of which also have trademark registrations for the term ‘grico’. The Respondent in this regard has placed reliance on Annexures B and D respectively. In support of its contentions, the Respondent cites the decision in Canned Foods Inc v. Ult. Search Inc., (FA 96320 National Arbitration Forum) and argues that a trademark that equally describes businesses conducted by many other people is not a protectable term.

The Respondent states that the term “grico” has a generic meaning as it has many possible references, which have been set out above and that no exclusive rights can therefore be claimed in the same. The Respondent contends that where the disputed domain name is a generic/descriptive term, it is difficult to conclude that there is a deliberate attempt to confuse because generic words are incapable of distinguishing one provider from another. The Respondent submits that genericness, if established, will defeat a claim of trademark rights, even in a mark, which is the subject of an incontestable registration. The Respondent relies on Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. The Respondent also argues that the word “grico” has a generic meaning, which is evident from search results for the said word. The Respondent claims that it acquired the disputed domain name in good faith as it represented a generic word “griko”, sometimes spelled as “GRICO” in Greek. The Respondent in support of its contentions has relied upon an extract of the Wikipedia page for the word “griko” that has attached as Annexure C to the Response.

The Respondent argues that common words and descriptive terms are legitimately subject to registration as domain names on a “first-come, first-served” basis. The Complainant places reliance on Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161.

The Respondent states that no reference to the Complainant can be found on searching for the word “grico”. The Respondent argues that the disputed domain name <grico.com> was not registered by the Respondent with the Complainant’s trademark in mind and that it had no knowledge of the same. Consequently, the Respondent submits that this is not a clear case of cybersquatting. Placing reliance on the Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 and argues that the Policy is designed to deal with clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts.

The Respondent submits that the evidence submitted by Complainant in this case does not support a finding that Complainant has any rights over the word “grico” and consequently the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent contends that the Respondent has rights or legitimate interests in respect of the disputed domain name <grico.com> and that it had registered the same as a part of its similar investment strategy of acquiring meaningful and single word domain names that would serve well as online addresses for prospective business houses. The Respondent in support of its contentions relies on Landmark Group v. Digimedia.com, LP,FA 285459 National Arbitration Forum that if the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.

The Respondent states that the business of registering, holding, and reselling of domain names constitutes a bona fide offering of goods or services. The Respondent contends that it acquired the disputed domain name <grico.com> due to its generic nature, based upon first/last name of thousands of individuals as well as businesses all around the world along with other additional domain names relating to personal names which ipso facto establishes the Respondent’s legitimate interest in the disputed domain name.

The Respondent in support of all of its submissions has attached a Sworn Declaration of its Director Dwayne Bulgin as Annexure A.

The Respondent contends that the Complainant has failed to show that its trademark GEICO is well-known outside United States. The Respondent submits that the Complainant’s foreign trademark registration outside its jurisdiction coupled with its lack of brand recognition makes it evident that the Respondent has not specifically targeted the Complainant. The Respondent states that though the Complainant had claimed that the trademark GEICO has been promoted worldwide on television, the same is an untrue statement. The Respondents contends that even the contact page provided only contact numbers in United States, which was the jurisdiction for Complainant’s services.

The Respondent places reliance upon Real Estate Edge, LLC V. Rodney Campbell, WIPO Case No. D2017‑1366 and submits that the weaker the mark the stronger must be the evidence. The Respondent argues that there has been no recital or evidence of revenues, advertising costs and/or promotional material associated with the trademark GEICO. The Respondent submits that such information would be crucial for the Panel to assess rights and interests in the disputed domain name relative to the Complainant’s descriptive service mark.

The Respondent contends that the disputed domain name <grico.com> had been parked by the Respondent with a reputed domain brokerage company in good faith. The Respondent states that it intended to sell off the disputed domain name, due to its generic nature and also had some parking links for brief periods on and off which since then have been closed off, as there was no intention of the Respondent to display any competitive links to the Complainant’s business. The Respondent submits that it had no knowledge of the Complainant or its insurance business. The Respondent contends that if the Complainant was keen to get said links removed from the website hosted on the disputed domain name, it could have tried to serve the Respondent with a simple warning but rather instituted the present proceedings to steal a highly valuable and highly aged generic domain name from its rightful owner.

The Respondent states where a party legitimately registers a domain name comprising commonplace or dictionary elements for sale, without an intent to target the trademark of an existing trademark owner, then that offer for sale can give rise to rights or legitimate interests in the domain name as a bona fide offering for the purposes of paragraph 4(c)(i) of the Policy. In support of its contentions, the Respondent cites the UDRP decision, Fresenius Kabi S.A. v. Domain Manager, EWEB Development, Inc., WIPO Case No. D2018-0491.

The Respondent contends that the Complainant has to furnish affirmative proof that the Respondent has no right or legitimate interest in the disputed domain Name. The Respondent places reliance on Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204.

The Respondent argues that the Panel has to resolve whether in registering the disputed domain name, <grico.com>, the Respondent intended to take advantage of the Complainant’s trademark at that time which would illustrate bad faith. The Respondent contends that both bad faith use, and registration must be proven for a Complainant to prevail. The Respondent submits that previous UDRP decisions have ruled that the definition of “abusive registration” was not intended to include domain names originally registered in good faith. The Respondent further placing reliance upon previous UDRP adjudications argues that proof of actual knowledge of a Complainant’s rights is required to prove bad faith registration and use.

The Respondent contends that the disputed domain name <grico.com> was acquired by the Respondent in November 2017 with many other domain names in good faith as a part of the Respondent’s portfolio of generic domain names. The Respondent has attached proof of part of Escrow transaction as Annexure A in support of its said contentions.

The Respondent submits that the disputed domain name has been put up for sale for approximately USD 500 and not USD 6,459, which according to it is appearing through some old source at “whois.domaintools.com”. The Respondent places reliance on UDRP decision Informa Business Information, Inc. v. Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., WIPO Case No. D2017-1756 and states that inflated price for a domain name is not a ground for forfeiting it to the Complainant.

The Respondent argues that the lack of evidence as to the use or promotion of the trademark GREICO in specific and in the absence of registration of the trademark in Respondent’s jurisdiction, supports a finding that the Respondent did not target the Complainant. The Respondent submitted that there is no evidence that the Respondent had knowledge of Complainant’s trademark when it purchased the disputed domain name, as a reference to the Complainant’s trademark reputation or sales and consequently the same was not in bad faith.

As regards the second part as to the disputed domain name is being used in bad faith, the Respondent claims that the PPC hyperlinks on the website hosted on the disputed domain name were mainly general in nature and all links to the competitors or potential competitors of Complainant was purely unintentional. The Respondent submits that since the acquisition of the disputed domain name <grico.com> in November 2017, it had been parked with a very reputed company for selling purposes, which also had an option for monetisation.

The Respondent contends that it had switched “on” the monetization option, which may have resulted in the appearance of PPC hyperlinks leading to competitive businesses / entities and that it would have removed the same on a simple warning from the Complainant. The Respondent submitted that as on date it has switched off the monetisation option to show that there was no mala fide intent in it having registered the disputed domain name <grico.com> except to sell it to an interested third party but never to the Complainant. There had never been any intention of the Respondent to disrupt the Complainant’s business or to confuse consumers looking for Complainant’s website.

The Respondent argues that the parking page hosted on the disputed domain name featured some hyperlinks which were auto generated by an established third-party domain monetization service and that the Respondent neither had any control over the said links nor was it practically possible for it to check whether each and every domain name forming a part of its portfolio matched with any registered trademark anywhere in the world or incorporated any misspellings of the same. The Respondent submits that like investors decades it had decided to register an inherently valuable domain name because it was available for registration.

The possibility of manipulation of hyperlinks appearing on the parking page of the Respondent cannot be ruled out, as the Complainant may have started advertising for the keyword “grico” with Google Adwords and as a result, the said hyperlinks appear on any such parking page in a bid to prove bad faith against the Respondent. The Respondent claims it has turned off the monetization feature on the domain and gives an undertaking that it won’t be turned “on” again in such a manner that it may show any infringing links. The Respondent therefore submits that the remedy sought by the Complainant be denied.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining the dispute: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar:

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Further, a trademark registration provides a clear indication that the rights in the trademark belong to the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1.

The Panel notes that the Complainant’s trademark GEICO is not a word or phrase but rather an acronym/ invented term derived from the initial letters of the Complainant corporate name, Government Employees Insurance Company and is distinctively associated with the goods and services of the Complainant.

The Complainant has provided evidence that it has trademark registrations at the USPTO for its trademark GEICO, the earliest registration for which dates back to 1964. Valid and subsisting trademark registrations constitute prima facie evidence of ownership, validity and the exclusive right to the use the said trademarks in connection with the stated goods and services.

The Complainant also uses the trademark GEICO as a part of the domain name <geico.com> and has a fully functional website operating on the same. As the Respondent has not challenged the Complainant’s assertion of its rights in its trademark GEICO, the Panel determines that the Complainant owns rights in the trademark GEICO.

The Panel further observes that the disputed domain name <grico.com> incorporates the Complainant’s trademark GEICO with a misspelling, where the letter “e” is replaced with the letter “r”. WIPO Overview 3.0, section 1.9, clearly sets out that a domain name, which consists of a common, obvious, or intentional misspelling of a trademark is to be considered by the Panels to be confusingly similar to the relevant mark for purposes of the first element outlined under Paragraph 4(a) of the Policy.

Previous UDRP decisions have consistently held that the introduction of small typographical changes or deliberate errors does not render Respondent’s domain name less confusingly similar to the core trademark held by the Complainant. See, Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259.

The substitution of the letter “r” for the letter “e” in the disputed domain name <grico.com> appears to be a deliberate misspelling as the letters “e” and “r” are next to each other on the standard QWERTY keyboard. The Panel notes that misspelled or typosquatted domain names are intended to be confusing so that Internet users, who unwittingly make common typing errors, will enter the typo-squatted domain name instead of the correct spelled trademark. See, National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 and Zions Bancorporation v. Ryan G Foo, PPA Media Services / Domain Admin, WhoIs Privacy Corp, WIPO Case No. D2014-2278.

The Respondent has contended that the Complainant does not have a trademark registration for the word “grico”. The Panel notes that in a proceeding under the Policy, to prove the first element of a claim, that a disputed domain name is identical to or confusingly similar to a trademark, the issue is not whether a Complainant has a trademark registration that is identical to the disputed domain name; it is enough that a disputed domain name is confusingly similar to a trademark in which a Complainant has rights.

Lastly, the Panel notes that section 1.11 of the WIPO Overview 3.0, provides that generic gTLD indicators (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and also have to be disregarded under the first element in the confusing similarity test.

Accordingly, the Panel concludes that the Complainant has proven the first element, that the disputed domain name <grico.com> is confusingly similar to the trademark GEICO, in which it has rights.

B. Rights or Legitimate Interests:

The second element that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name.

i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has stated that it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GEICO trademark in a domain name or in any other manner. The Complainant has also contended that the Respondent has never been commonly known by the disputed domain name and that its misappropriation of the GEICO trademark as a misspelling in the disputed domain name was no accident. The Complainant also states that use of the disputed domain name to generate PPC revenue does not amount to use in connection with a bona fide offering of goods and services.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”. See, De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465.

The Panel has perused the Complaint and the Response with all the accompanying Annexures furnished by the Parties, and on the basis of material produced as well as its own independent Internet searches, has arrived at the following conclusions:

i) The Panel finds that the Complainant is the registered proprietor and owner of the trademark GEICO, rights in respect of which have accrued in the Complainant’s favour, long prior to the registration of the disputed domain name <grico.com> on January, 23, 2003 or its acquisition by the Respondent in November, 2017. The Panel notes that the Complainant has demonstrated that it holds a number of trademark registrations for GEICO in the United States. See, Annexure-D to the Complaint.

Though the Complainant has not demonstrated its trademark registrations outside the United States, its presence and business activities in different countries, its corporate sales figures, advertising budgets and spending in various countries and the date of registration of the Complainant’s domain name <geico.com>, the Panel has undertaken limited research within its general powers set forth by paragraphs 10(a) of the Rules and has independently visited the Internet in order to obtain additional light on the matter. Searches by the Panel indicate that Complainant does have overseas offices and that it provides international insurance services in various countries across the globe as also that the Complainant’s domain name <geico.com>, was registered on June, 22, 1995 which predates the date of registration of the disputed domain name <grico.com> on January, 23, 2003 or its subsequent acquisition by the Respondent in November, 2017.

ii) The Panel finds that the Respondent is not commonly known by the disputed domain name <grico.com> and does not have any trademark registration for the term “grico”. The disputed domain name is almost identical to the Complainant’s trademark, GEICO wherein the letter “e” has been substituted by the letter “r”. The Panel considers that this is a minor change in the disputed domain name and constitutes a misspelling that intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation with the Complainant. Against this backdrop, the Panel finds that the disputed domain name <grico.com> is a typo-squatted version of Complainant’s GEICO trademark which enjoys considerable reputation and goodwill in United States and is in use in other countries around the world.

iii) The Respondent states that its legitimate interest in the disputed domain name <grico.com> is for its generic value, being the first/last name of thousands of individuals (Annexure – B of the Respondent’s response), the name/trademarks of various businesses (Annexure – D Respondent’s response) as well as a term of generic meaning in the Greek dialect (Annexure – C of the Respondent’s response). It has submitted that it acquired the disputed domain name <grico.com> as a part of its legitimate investment strategy of acquiring meaningful and single word domain names that would serve well as online addresses for prospective clients. The Panel notes that previous UDRP decisions have settled that speculating in intrinsically valuable domain names represents a legitimate business interest in itself, unless the evidence points instead to a disguised intent to exploit another party’s trademark. See, Brooksburnett Investments Ltd. v. Domain Admin / Schmitt Sebastien, WIPO Case No. D2019-0455.

Section 2.9 of the WIPO Overview 3.0, however, sets out that while applying paragraph 4(c) of the Policy, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona-fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s trademark or otherwise mislead Internet users.

The Panel notes from the extract of the erstwhile website operated by the Respondent on the disputed domain name, <grico.com>, that it comprised PPC hyperlinks that were automatically generated. The Panel observes that the third party PPC links featured on the website parked on the said domain name mention “GEICO PHONE NUMBER” and that some of them redirected to websites promoting the Complainant as well as the competitors of the Complainant in the insurance business (See, Annexure- F to Complaint).

The Panel also notes that the Respondent has failed to demonstrate why it needed to rely specifically on the term “grico” in order to run its business, if not to commercially profit from the fact that it is a typo-squatted version of the Complainant’s GEICO trademark.

Particularly, with respect to “automatically” generated PPC links, section 3.5 of the WIPO Overview 3.0 explains that previous UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with the disputed domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests in the disputed domain name). The fact that such links are generated by a third party or the fact that the respondent itself may not have directly profited, would also not preclude a finding of bad faith. See, SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497.

Lastly, the Panel notes that while the disputed domain name has been advertised for sale at a price of USD 6,459 on “whois.domaintools.com” (See Annexure A of the Complaint), while the extracts of the erstwhile website operated by the Respondent on the disputed domain name indicates that the same has been put up for sale for USD 500. The Respondent admittedly offered to sell the disputed domain name at the price starting at USD 500, which demonstrates that the Respondent has no legitimate interests in the disputed domain name. In any case, the use of the disputed domain name <grico.com> of the Respondent obviously does not constitute legitimate noncommercial or fair use of the disputed domain name because any use of the disputed domain name would result in deception and the diversion of users or potential users of the Complainant. See, WIPO Overview 3.0, section 2.5.3.

The Panel accordingly finds no evidence of use or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name by the Respondent in connection with a bona fide offering of goods or services that would warrant the registration of the disputed domain name (paragraph 4(c)(i) of the Policy). The Respondent is also not found by the Panel to be making a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith:

According to the Policy, bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See, section 3.1 of the WIPO Overview 3.0.

Previous UDRP panels have consistently found that it ought to be presumed that the respondent had constructive notice of the complainant’s trademark if it is shown by the Complainant to be well known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain name. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

It has been demonstrated (see section 6 B above) that the disputed domain name <grico.com> includes a typo-squatted version of Complainant’s GEICO trademark, which enjoys considerable recognition in the United States and beyond. In this context, the Panel has recognized that the disputed domain name was registered in 2003 and was acquired by the Respondent in November, 2017. However it also notes that the Complainant’s rights in the GEICO trademark date back to 1964. In the absence of any plausible explanation for the Respondent to have adopted the name “grico” for hosting a website containing PPC links referring to the Complainant and leading to third party websites providing insurance services, the Panel draws an inference that both at the time of registration as well as the subsequent acquisition and use of the disputed domain name <grico.com>, the Complainant’s rights in the GEICO trademark were well-known. The Panel notes that the nature of the disputed domain name (being a misspelling of the Complainant’s trademark GEICO by only one letter) could easily cause confusion and therefore this is a case of a deliberate typo squatting by the Respondent.

This Panel considers it highly probable that the disputed domain name had been registered or acquired by the Respondent and used with the intention of creating a likelihood of confusion as to an affiliation or association with the Complainant and its trademark, and to mislead and therefore attract Internet users to the Respondent’s website. The Respondent’s intention seems to have been to profit from the recognition of the Complainant’s trademark by taking unfair advantage of the same. Such behavior qualifies as bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy. See, WIPO Overview 3.0, section 3.1).

The Respondent has contended that the acquisition and use of the disputed domain name was not in bad faith because:

i) there is no evidence that Respondent acquired or used the disputed domain name to target the Complainant or its products, when the search result for “grico” do not provide any result pertaining to the Complainant and its trademark GEICO.

ii) the parking page on the disputed domain name has PPC hyperlinks that are auto generated over which the Respondent has no control.

iii) the Respondent has not specifically targeted the Complainant nor contacted the Complainant for the sale of the disputed domain name.

iv) that it had acquired the disputed domain name in good faith for its value as a premium generic domain name for prospective business houses and clients and not to cause harm or mislead Internet users into believing that its web site had an affiliation with the Complainant or its trademark GEICO.

v) intention was always to sell the disputed domain name owing to its generic nature and had some parking links featured on it for brief periods of time on and off, which have been closed off, as there was no intention to display any competitive links to the Complainant’s business and that Respondent had no knowledge of the Complainant or it’s Insurance business.

vi) that the disputed domain name had been parked with a very reputed company for selling purposes, which has an option for monetisation, which when switched on may have resulted in generation of PPC hyperlinks leading to competitive business and the same has since then been switched off to demonstrate there was no mala-fide intent in acquiring the disputed domain name except to sell the same

The Panel notes that the fact that search results for the term “grico” produce no results pertaining to the Complainant is of no avail to the Respondent. As discussed in section 6A above, a domain name does not have to be identical to a trademark in which a Complainant has rights, but only confusingly similar.

The Panel finds that the result of the Respondent using the disputed domain name is misleading. The renown of the GEICO trademark coupled with its mention as a PPC hyperlink on the Respondent’s erstwhile website as also the redirection of the domain name to websites providing competing insurance services is enough to imply an affiliation to Internet users with the Complainant’s name/trademark GEICO.

The Panel does not agree that the Respondent had no hand in choosing the type of PPC hyperlinks that would appear and notes that domain name parking services usually allow users to choose “keywords”; to associate with a domain name so that the PPC hyperlinks that appear on the page are better aligned with the domain name in the hope that more click through revenue is generated.

In circumstances where a respondent does not disclose the exact manner in which the disputed domain name parking service web page has been set up and also does not disclose exactly what keywords it has chosen; it is reasonable for the Panel to infer that the respondent had some influence upon the sponsored link selection process. See, Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695 and Columbia Insurance Company, Shaw Industries Group Inc. v. Adminstrator, Domain, WIPO Case No. D2007-0583). Therefore, the Panel holds that it while it is likely that the Respondent may be correct in stating that the PPC hyperlinks were automatically generated, it does not necessarily follow that it had no influence over the type of hyperlinks that were appearing on the erstwhile website hosted on the disputed domain name.

The Panel therefore finds that the use of a domain name parking service constituted bad faith use of the disputed domain name <grico.com>. Further, the Panel also observes that the Complainant’s interest in and fame of the “GEICO” trademark combined with the Respondent’s subsequent bad faith use of the disputed domain name would ordinarily be sufficient to allow the inference that the said domain name was also registered in bad faith. The Panel notes that there is an absence of evidence that could indicate the exact intention behind the registration of the disputed domain name <grico.com> when it was originally registered (by a third party), but from the recent use of the same by the Respondent who in any event says he acquired it in November 2017, it is reasonably possible to infer that the same was acquired to take unfair advantage of the reputation and goodwill of the name “GEICO”. The Panel therefore accepts that the registration of the disputed domain name was in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel holds finds that the conditions stipulated under paragraph 4(a)(iii) of the Policy also stand fulfilled.

D. Reverse Domain Name Hijacking:

The Respondent claims that it would have removed the PPC hyperlinks parked on the disputed domain name <grico.com>, on a simple warning of the Complainant but instead it chose to institute the present proceedings in an attempt to grab a highly valuable generic domain name, which could be easily sold at a value above USD 500 as was indicated on the parking page of the Respondent’s disputed domain name.

The Respondent alleges manipulation of the PPC hyperlinks by the Complainant and states that it may have started advertising for the ‘grico’ keyword with Google Adwords, for the said hyperlinks to appear on the erstwhile domain name to attribute bad faith onto the Respondent. The Respondent alleges that the Complainant’s conduct constitutes Reverse Domain Name Hijacking (“RDNH”). In light of the discussion above, the Panel holds that there is no need for any finding on the claims of RDNH of the Respondent as the same is devoid of any merit.

7. Decision

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 <grico.com> be transferred to the Complainant.

Shwetasree Majumder
Sole Panelist
Date: September 23, 2019