WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (GEICO) v. Jerry O’Steen / Izagg Incorporated
Case No. D2014-2286
1. The Parties
The Complainant is Government Employees Insurance Company (GEICO) of Chevy Chase, Maryland, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Jerry O’Steen / Izagg Incorporated of Cedar Hill, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <geicocloud.com> (the “Disputed Domain Name”) 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 December 31, 2014. On January 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 12, 2015. 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 states, and provides evidence to support, that it is “a well-known insurance company that has provided insurance services since 1936”; that it “offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others”; that it “invests large sums to promote and develop its marks through television, print media, and the Internet”; and that it is the registrant of the domain name <geico.com>, which it uses “to promote and sell its motor vehicle insurance services.”
Complainant states, and provides evidence to support, that it is the owner of “numerous federally registered trademarks”, including the following in the United States (collectively referred to hereafter as the “GEICO Trademarks”):
- U.S. Reg. No. 763,274 for GEICO (registered January 14, 1964) for use in connection with, inter alia, “[i]nsurance Underwriting and Related Services”
- U.S. Reg. No. 2,601,179 for GEICO (registered July 30, 2002) for use in connection with “[p]roviding insurance brokerage and underwriting services”
The Disputed Domain Name was registered on March 23, 2014, and is used in connection with a monetized parking page with insurance-related links, including links labeled, inter alia, “Auto Insurance Rates”, “Cheapest Insurance” and “Insurance Companies”.
5. Parties’ Contentions
Complainants contend, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because the Disputed Domain Name contains one of the GEICO Trademarks in its entirety plus the word “cloud,” which “does not remove the initial confusion.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO Marks in a domain name or in any other manner”; “Respondent has never been known by the Disputed Domain Name”; and “Respondent could have no legitimate interest in the GEICO Marks since it is not a name that Respondent would have legitimately and randomly chosen to use in connection insurance sales/offerings.”
- The Disputed Domain Name has been registered and is being used in bad faith because, inter alia, “[i]t is well-settled that the acquisition of a domain name for the purpose of creating a page that links to sites and services that are competitive with Complainant [establishes bad faith and] does not establish a legitimate interest in the disputed domain name”; and “there is no conceivable contemplated use of the Disputed Domain Name (which wholly incorporates the GEICO mark) that would not be an infringing use by the Respondent.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, as well as supporting documentation, it is apparent that Complainant has rights in and to the GEICO Trademarks.
As to whether the Disputed Domain Name is identical or confusingly similar to the GEICO mark, the relevant comparison to be made is with the second-level portion of the domain name (i.e., “geicocloud”), as it is well-established that the Top-Level domain “.com” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable Top-Level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).
This Panel agrees here with the decisions cited by Complainant in which previous UDRP panels found domain names containing a complainant’s trademark plus the word “cloud” to be confusingly similar to the relevant trademarks (including one decision in which the Respondent here was also the respondent): Walgreen Co. v. Jerry O'Steen, WIPO Case No. D2014-0985; Woolworths Limited v. Joan Kerr, WIPO Case No. D2011-1826 ; SAP AG v. Peifang Huang, WIPO Case No. D2014-0928; LEGO Juris A/S v. Samuel Olsson, WIPO Case No. D2012-2390.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that, inter alia, “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO marks in a domain name or in any other manner”; “Respondent has never been known by the Disputed Domain Name”; and “Respondent could have no legitimate interest in the GEICO marks since it is not a name that Respondent would have legitimately and randomly chosen to use in connection insurance sales/offerings.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), citing decisions in support of its conclusion that “[i]t is well-settled that the acquisition of a domain name for the purpose of creating a page that links to sites and services that are competitive with Complainant [establishes bad faith and] does not establish a legitimate interest in the disputed domain name.” This Panel agrees. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <geicocloud.com> be transferred to the Complainant.
Douglas M. Isenberg
Date: February 27, 2015