WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Fundacion Private Whois
Case No. D2013-1790
1. The Parties
The Complainant is Government Employees Insurance Company, of Chevy Chase, Maryland, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Fundacion Private Whois, of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <geicotrust.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2013. On October 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2013, 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 October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 19, 2013. 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 obtained United States federal trademark (USPTO) registration for the trademark GEICO on January 14, 1964 (International Class No. 36; Registration No. 763,274 for automobile insurance and related services). The Complainant attaches evidence of other USPTO registrations, inter alia, for the trademarks GEICO and GEICO DIRECT.
The disputed domain name was registered on October 7, 2013.
5. Parties’ Contentions
The Complainant asserts that it has made extensive use of the GEICO trademarks in connection with its services and invested large amounts in related promotion and development in the media. As a result the GEICO trademarks have become uniquely associated with the Complainant’s services. The Complainant asserts that it has 11 million customers, 27,000 employees and insures 16 million vehicles.
The Complainant also asserts that it operates a website at “www.geico.com” in connection with its insurance services.
The Complainant contends that the disputed domain name is confusingly similar to its GEICO trademark. The additional word “trust” is descriptive and does not distinguish the disputed domain name, it submits.
Further the Complainant asserts that the Respondent has no connection or affiliation with GEICO and has not received any license or consent to use the GEICO trademarks in a domain name or in any other manner. The Complainant believes that the Respondent has never been known by the disputed domain name. The Complainant contends that the disputed domain name is not a name that the Respondent could have chosen legitimately or randomly.
Further, the Complainant contends that the Respondent registered the disputed domain name in bad faith by doing so with full knowledge of the Complainant’s rights in the GEICO trademarks. It is inconceivable, according to the Complainant, that the Respondent could have been unaware of the Complainant’s famous trademark at the time of registration of the disputed domain name. At a minimum the Respondent had actual notice of the Complainant’s rights because of the considerable advertising presence of the Complainant. In any case, the Complainant contends that the Respondent had constructive notice of its rights because of the presence of those marks on the publicly available register of federal US trademarks.
Moreover the Complainant contends that by establishing and operating what it refers to as an associated “bogus site”, the Respondent evidences bad faith use of the disputed domain name. The Complainant asserts that the Respondent has used identical representations of its GEICO trademark at the bogus site. Such fraudulent use of the Complainant’s trademark and the disputed domain name is clear bad faith, as other panels have regularly decided. Furthermore, the website to which the disputed domain name resolves is automobile related and uses not only the GEICO trademark but also adopts the look and feel of the Complainant’s own website. According to the Complainant the website to which the disputed domain name resolves is used for or associated with fraudulent activities, as it holds itself out as being associated with the Complainant, so as to persuade Internet users to engage the apparent services it offers. According to the Complainant the said website is associated with the activities of a fraudulent escrow service provider that uses the name “Geico Trust”, and has harmed innocent individuals by failing to deliver goods or refund escrow monies.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s GEICO trademark. However, the disputed domain name incorporates that trademark in its entirety as its first and most prominent part. The additional incorporation of the generic term “trust” is not apt to dispel the suggestion of an association or connection with the Complainant. In fact it is liable to further reinforce the impression that a legitimate connection with the Complainant exists, as it suggests a trusted service or a service supplied by a trust associated with the Complainant. As Panels have regularly decided, the addition or incorporation of a generic or descriptive term of ordinary language does in any case not dispel a conclusion of confusing similarity. The Complainant’s trademark is very distinctive, and the combination with the word “trust” does not form a word or concept with a primary meaning or message different than the Complainant’s trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s GEICO trademark.
B. Rights or Legitimate Interests
There is no evidence before the Panel to indicate that the Respondent is known by the name “Geico” or “Geicotrust” or has legitimately acquired any rights in either. The Complainant asserts that it has not granted any authority or licensed the Respondent to use its trademark GEICO in a domain name or in any other way. The Respondent is not a legitimate provider of GEICO services, according to the Complainant. In the circumstances the only conclusion open to the Panel is that the disputed domain name was adopted by the Respondent to create the false impression of some connection or association with the Complainant, and derive advantage from so misleading Internet users. Such use or adoption of a domain name does not give rise to any rights or legitimate interests, as has often been decided by previous UDRP panels.
Therefore the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant uses its trademark GEICO in relation to its insurance services, and has done so for a long time. It has millions of customers and asserts that it invests greatly in advertising. It has 27,000 employees. The trademark GEICO is distinctive. The fact that, according to the Complainant, the Respondent established a website under the disputed domain name which served to fraudulently offer escrow services related to vehicle purchases further indicates that the Respondent was well aware of the Complainant’s business activities and trademarks. The deliberate incorporation of the generic term “trust” as well is consistent with bad faith. Furthermore, the Complainant attaches material to the Complaint that establishes that the website to which the disputed domain name resolved, at the time accessed by the Complainant, also incorporated representations of the Complainant’s trademark, and a look and feel similar to the Complainant’s own “www.geico.com” website. Some evidence is before the Panel that this website was associated with fraudulent activity aimed at obtaining funds transferred from unsuspecting consumers for non-existent escrow services connected with vehicle purchases. When the Panel accessed the website to which the disputed domain name resolves on November 29, 2013 the link had been severed and only the message “Internet Explorer cannot display the webpage” appeared. All this is consistent in this Panel’s view with use in bad faith.
Therefore the Panel holds that the disputed domain name was registered and is being used in bad faith.
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 <geicotrust.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: December 2, 2013