WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-2919
1. The Parties
The Complainant is Government Employees Insurance Company, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrars
There are a total of 5 domain names in issue (collectively, “the disputed domain names”).
The disputed domain names <claimsgeico.com>, <geicocash.com> and <myhrgeico.com> are registered with GoDaddy.com, LLC (“GoDaddy”).
The disputed domain names <geicoinsuarance.com> and <geiconisurance.com> are registered with NameCheap, Inc. (“NameCheap”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2021 in relation to the domain names <geicoinsuarance.com> and <geiconisurance.com>. On September 6, 2021, the Center transmitted by email to NameCheap a request for registrar verification in connection with the domain names <geicoinsuarance.com> and <geiconisurance.com> (the “NameCheap domain names”). On September 6, 2021, NameCheap transmitted by email to the Center its verification response disclosing registrant and contact information for the NameCheap domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2021 providing the registrant and contact information disclosed by NameCheap, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint, adding the domain names <claimsgeico.com>, <geicocash.com> and <myhrgeico.com> (“GoDaddy domain names”) to the dispute, on September 13, 2021.
On September 21, 2021, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the GoDaddy domain names. On September 21, 2021, GoDaddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the GoDaddy domain names, and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Amended Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.
The Center appointed Warwick Smith as the sole panelist in this matter on November 8, 2021. 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.
Following his appointment, the Panel noted a possible issue over the notification of the Written Notice as it related to two of the disputed domain names, <claimsgeico.com> and <myhrgeico.com>.
The Respondent’s physical address provided by GoDaddy and NameCheap for the other three disputed domain names was incomplete. DHL had been unable to deliver the Written Notice to that incomplete address, and reported it as a “bad address”. However, the registrant’s address details provided by the two registrars for the disputed domain names <claimsgeico.com> and <myhrgeico.com> added some information. The addresses on the courier packs sent by the Center for the <claimsgeico.com> and <myhrgeico.com> disputed domain names omitted that additional information.
It seems clear from DHL’s inability to effect delivery of the Written Notice that the Respondent has provided false or incomplete address details to GoDaddy and NameCheap for all five disputed domain names. In those circumstances, the Panel is of the view that the Center has satisfied its primary obligation to employ reasonably available means calculated to achieve actual notice of the Written Notice, as required by Rule 2(a)(i) of the Rules.
4. Factual Background
The Complainant is a substantial insurance company. Since 1948, it has provided insurance brokerage and underwriting services throughout the United States of America in respect of a variety of risks, including motor vehicle cover, cover for boats, residential and commercial property cover, flood damage insurance, and travel insurance. It says that it has issued over 17 million policies, and that it covers more than 28 million vehicles. It has over 40,000 employees.
The Complainant has provided those services under the mark GEICO, and it holds a United States federal registration for the word mark GEICO dating from January 14, 1964 (service mark No. 0763274, registered on the Principal Register of the United States Patent and Trademarks Office in respect of insurance underwriting and related services).
In addition, the Complainant has held European Union and International (Madrid Protocol) registrations for the word mark GEICO, covering insurance brokerage and underwriting services in International Class 36, since September 2013.
The Complainant has extensively marketed the insurance products it sells under its GEICO mark, using the mark on major social media platforms such as Facebook, Twitter, Instagram, YouTube and LinkedIn, where it has attracted thousands (and in some cases millions) of followers. Its principal website is at “www.geico.com” (the Complainant’s website), which it uses to promote and sell its insurance products.
The disputed domain names were registered on the following dates:
1. <claimsgeico.com> April 13, 2018.
2. <myhrgeico.com> April 30, 2019.
3. <geicocash.com> August 10, 2021.
4. <geiconisurance.com> August 17, 2021.
5. <geicoinsuarance.com> August 17, 2021.
The disputed domain names <geicocash.com>, <geicoinsuarance.com>, and <geiconisurance.com> each resolve to parking pages displaying auto-generated pay-per-click links to third parties’ products and services, including many insurance products. For example, two of the links on the screenshot of the website at <geicocash.com> which the Complainant produced, were: “Commercial Insurance”, and “Cheap insurance quotes”. The website at <geicoinsuarance.com> has included links to sites concerned with renter’s insurance, and one of the insurance-related links on the website at <geiconisurance.com> was “AAA Car Insurance”.
The disputed domain name <myhrgeico.com> has also resolved to parking pages displaying click-on links to third party websites, although the links appear to have been directed primarily to employment-related topics (for example, “employee benefits”, and “Hr Payroll”).
The disputed domain name <claimsgeico.com> has resolved indirectly to a number of rotating websites, including a website offering for sale an anti-virus product of a third party having no connection with the Complainant. The Complainant says that, during its investigations, it was served with anti-virus alerts preventing its access to at least some of the websites to which the <claimsgeico.com> website has resolved, because of malware on those websites.
Each of the disputed domain names is listed for sale by auction through Sedo, with a minimum bid of USD 899.00
The Complainant emailed letters to the Respondent seeking the transfer the disputed domain names on August 2, 2021 (<claimsgeico.com>), August 12, 2021 (<geicocash.com>), August 13, 2021 (<myhrgeico.com>), and August 20, 2021 (<geiconisurance.com> and <geicoinsuarance.com>). The Respondent did not respond to the emails.
5. Parties’ Contentions
A. Complainant
The Complainant has rights in its GEICO mark, and each of the disputed domain names is confusingly similar to that mark. The Complainant’s GEICO mark has become world famous, and the Respondent has been attempting to obtain a free ride on the Complainant’s goodwill in its GEICO mark, by misleading and attracting Internet users to the Respondent’s own websites, all in violation of the Policy.
The Respondent has no rights or legitimate interests in respect of the disputed domain names or any of them. The Complainant has not authorized the Respondent to use its GEICO mark in the registration of any domain name, and the Respondent is not commonly known by any of the disputed domain names. She has not used (or made demonstrable preparations to use) any of the disputed domain names in connection with any bona fide offering of goods or services, and nor has she been making any legitimate noncommercial or fair use of any of the disputed domain names. Any current or conceivable future uses of the disputed domain names by the Respondent do or would violate the Policy. Furthermore, UDRP panels have held that the use of a domain name for illegal activity including distributing malware (as the Respondent appears to be doing through the <claimsgeico.com> website), can never confer rights or legitimate interests in a disputed domain name.
The Respondent registered and has been using the disputed domain names in bad faith. First, the incorporation of the Complainant’s famous GEICO mark into the disputed domain names creates a presumption of bad faith.
Secondly, the Respondent’s advertising the disputed domain names for sale for USD 899 each indicates bad faith on her part. That figure is far in excess of the Respondent’s out-of-pocket expenses for each domain name, and the use of the disputed domain names to profit from the Complainant’s reputation in its GEICO mark in order to obtain pay-per-click revenue, strongly suggests that the Respondent’s intention in registering the disputed domain names was to exploit the Complainant’s GEICO mark for profit.
Thirdly, the URLs that display upon redirection appear to be appended with a lengthy affiliate ID or user name for commission tracking purposes. Where this has occurred it is clear that the Respondent has been using the disputed domain names for redirection purposes in order to reap undeserved affiliate commission, thus unfairly and in bad faith profiting from the Complainant’s reputation in its GEICO mark.
Fourthly, the Respondent’s failure to respond to the Complainant’s demand letters, and her continued use of the disputed domain names, are further indicators of bad faith registration and use.
Fifthly, the Respondent has a history of abusively registering and using domain names incorporating third-party trade marks. In one previous WIPO UDRP case, the panel noted that the Respondent has been identified as a respondent in 95 complaints under the Policy1 , and in another case the panel noted that she had been the respondent in 161 proceedings under the Policy.2 These cases show that the Respondent has engaged in a pattern of bad faith registration and use of domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has made out this element of the Amended Complaint.
It is the registered proprietor of the service mark GEICO in the United States, the European Union, and internationally under the Madrid registration system, and that is sufficient to establish that it has rights in that mark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant’s GEICO mark is incorporated in full within each of the disputed domain names, and that is often accepted as being sufficient to establish confusing similarity under paragraph 4(a)(i). On that point, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states at section 1.8:
“Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
In this case, the GEICO mark is clearly recognizable within each of the disputed domain names, and in all of them it is accompanied by either a common dictionary word (“cash”, “claims”), an easily recognizable abbreviation for an English expression (“myhr”, meaning “my human resources [department]”), or an obvious mis-spelling of the word “insurance” (“insuarance”, “nisurance”).
For those reasons, the Panel finds that the Complainant has sufficiently shown that each of the disputed domain names is confusingly similar to the GEICO mark in which it has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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 trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
WIPO Overview 3.0, section 2.1, states the following on the burden of proof under paragraph 4(a)(ii) of the Policy:
“While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, there is nothing to suggest that the Respondent (or any entity associated with her) has been commonly known by any of the disputed domain names, and the Complainant has not licensed or authorized her to use its GEICO mark, whether in a domain name or otherwise. There appears to be no possible claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) any of the disputed domain names, or any name corresponding to any of them, in connection with any bona fide offering of goods or services. The disputed domain names appear to have been used only to derive revenue from pay-per-click parking pages, or to earn affiliate commissions, by misleading Internet users into believing that any websites at the disputed domain names will be associated with the Complainant, thus capitalizing on the Complainant’s reputation and goodwill in its GEICO mark. Neither use could amount to a bona fide offering of goods or services.
The facts that the disputed domain names were all registered fairly recently, but are all now listed for sale, also tends to confirm that the disputed domain names were not registered for the purposes of any bona fide offering of goods or services.
Nor, on the evidence produced, could the Respondent’s use of any of the disputed domain names support a claim to rights or interests based on a “legitimate” noncommercial, or “fair”, use of the disputed domain names under paragraph 4(c)(iii) of the Policy. Deliberate, unauthorized use of a trade mark owner’s mark in a domain name for commercial gain could not, at least in normal circumstances, amount to a “fair” use of a disputed domain name, and nor could such use be described as a legitimate noncommercial use. There does not appear to be any arguable right or legitimate interest under paragraph 4(c)(iii) of the Policy.
For those reasons the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, in respect of each of the disputed domain names, sufficient to move the onus of showing that some right or legitimate interest exists to the Respondent. In the absence of a response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted. The Panel therefore finds for the purposes of paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 the holder’s website or location or of a product or service on the holder’s website or location.
The Panel accepts that the Complainant has also proved this element of the Complaint.
The disputed domain names are all confusingly similar to the Complainant’s GEICO mark, and the Panel has found that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
Next, the GEICO mark, which is in each of the disputed domain names, is not a generic, or dictionary, word. It was coined by taking the first letter from each of the first three words in the Complainant’s name, and adding the common abbreviation “co”. In those circumstances, the high likelihood is that the Respondent intended “geico” to be understood as a reference to the Complainant and the insurance services it provides under its GEICO mark.
The use of expressions clearly intended to evoke the insurance industry (“insuarance” and “nisurance”) in two of the disputed domain names effectively removes any doubt about that – those expressions were clearly calculated to direct the minds of Internet users to the insurance market, in which the Complainant’s GEICO mark is very widely known (particularly in the United States). The word “claims” is also commonly used in and associated with the insurance industry. The other expressions used in the disputed domain names (“cash” and “myhr”) are not specifically related to the insurance industry, but they are commonly used in business generally, including in the insurance sector.
Given what appears to be the Respondent’s heavy involvement in the acquisition and sale of domain names, it is inconceivable that she would not have checked who held the <geico.com> domain name before she registered the disputed domain names. If she made that check it would have led her directly to the Complainant’s website. The use of insurance-related expressions in three of the disputed domain names also suggests that she was indeed aware of the Complainant as a significant player in the insurance market and that she was targeting the Complainant.
In the absence of any Response to the Amended Complaint, the Panel concludes that the Respondent knew about the Complainant and its GEICO mark when she registered the disputed domain names.
In respect of the four disputed domain names that resolve to parking pages displaying click-through links to third party websites (<geicocash.com.>, <myhrgeico.com>, <geicoinsuarance.com>, and <geiconisurance.com>), the Panel is satisfied that the circumstances constitute bad faith registration and use under paragraph 4(b)(iv) of the Policy. By using these disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain (click-through or similar revenue), Internet users to the websites at the domain names by creating a likelihood of confusion with the Complainant’s GEICO mark as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve, or of the services offered on those websites.
In respect of the disputed domain name <claimsgeico.com>, the Complainant submits that a respondent’s use of a disputed domain name to revert, through redirection, to a website that appears to distribute malware constitutes bad faith. A screenshot of the website to which this domain name resolves was produced by the Complainant, and it contains a warning from Microsoft that the site has been reported as unsafe, as it “has been reported as containing phishing threats which may try to steal personal or financial information.”
The WIPO Overview 3.0 states at section 3.4:
“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include …..phishing, identity theft, or malware distribution….”
The Respondent’s use of the disputed domain name <claimsgeico.com> in this case does appear to come within that category of bad faith registration and use, and in the absence of any response, the Panel concludes that the <claimsgeico.com> domain name was registered (and has been used) by the Respondent for one or more of the bad faith purposes described at section 3.4 of the WIPO Overview 3.0.
That is enough to resolve the Amended Complaint in the Complainant’s favor, and beyond observing that the Panel’s finding of bad faith in the registration and use of the disputed domain names seems consistent with the findings of abusive domain name registration made against the Respondent in previous UDRP cases, it is not necessary to address the Complainant’s various other arguments.
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 names <claimsgeico.com>, <geicocash.com>, <geicoinsuarance.com>, <geiconisurance.com> and <myhrgeico.com>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: November 19, 2021
1 Tommy Bahama Group, Inc. v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Commercio Electronico, WIPO Case No. D2020-0501.
2 Teva Pharmaceutical Industries Ltd v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Commercio Electronico, WIPO Case No. D2020-0071.
3 The “.com” suffix is not normally taken into account in the comparison required by paragraph 4(a)(i) of the Policy.
4 WIPO Overview 3.0, section 2.9states: “Applying UDRP paragraph 4 (c), 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 capitalise on the reputation of the complainant’s mark or otherwise mislead Internet users….”