WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC
Case No. D2016-1275
1. The Parties
The Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd. of Fortitude Valley, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <geicorewards.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 24, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 27, 2016.
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 Complaint, and the proceedings commenced on July 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2016.
The Center appointed Dana Haviland as the sole panelist in this matter on August 15, 2016. 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 (“GEICO”) is a well-known insurance company that has provided insurance services since 1936, including automobile, motorcycle, homeowners, rental, flood, mobile home, personal umbrella, and overseas insurance.
GEICO has obtained numerous federally registered trademarks and service marks in connection with its goods and services (collectively, the “GEICO Mark”). GEICO has produced copies of several of the United States trademark registrations of its GEICO Mark, including Service No. 763,274 for GEICO in class 36 for insurance underwriting and related services, registered on January 14, 1964.
In connection with its insurance products and services, the Complainant has established a website located at “www.geico.com”, which it uses to promote and sell its motor vehicle insurance services.
The Domain Name was registered on February 19, 2005.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence to establish that it is the owner of rights in its GEICO Mark which predate the registration of the Domain Name.
The Domain Name incorporates the Complainant’s GEICO Mark in its entirety, adding the generic word “rewards” and the “.com” generic Top-Level Domain (“gTLD”). It is well established that the inclusion of the gTLD typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820.
The addition of the generic term “rewards” does not negate the confusing similarity of the Domain Name to the Complainant’s Mark. See PepsiCo, Inc. v. Bin G Glu, WIPO Case No. D2007-0490 (transferring <pepsirewards.com> to complainant); La Quinta Worldwide, L.L.C. v. Texas International Property Associates, WIPO Case No. D2009-1436 (transferring <laquintarewards.com> to complainant).
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has thus established the first element of its claim under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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.” See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Here the Complainant has made out such a prima facie case, and the Respondent has not submitted any response to the Complainant’s contentions or evidence to establish any rights or legitimate interests in the Domain Name.
According to the Complaint, the Respondent has registered the Domain Name including the Complainant’s GEICO Mark without the Complainant’s authorization. The Complainant asserts that the Respondent is not commonly known by the Domain Name, has no relationship with the Complainant, and has not been licensed to use the Complainant’s Mark in a domain name or otherwise.
There is no evidence that the Respondent, who has failed to respond to the Complaint, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the evidence shows that the Domain Name has been used to resolve to various websites, including at least one with click through links to insurance services of the Complainant and its competitors.
This use of the Domain Name by the Respondent does not demonstrate any right or legitimate interest in the Domain Name and does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Eli L. Lilly and Company v. URDMC, LLC, WIPO Case No. D2011-0715 (respondent’s use of the disputed domain name for a parking website, which advertised goods and services of the complainant and third parties that were competitive with those of the complainant, did not establish rights or legitimate interests); Groupon Inc. v. Xiangsheng Zhou, feng zhou, WIPO Case No. D2014-1609 (use of domain names confusingly similar to complainant’s well-known mark to point to websites from which advertising income is presumably derived does not amount to a bona fide offering of goods and services nor a legitimate or noncommercial fair use).
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or 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.
As discussed above, at least one of the websites to which the Domain Name resolves includes apparent “pay-per-click” hyperlinks to the goods and services of the Complainant and its competitors. The redirection of Internet users to a website which provides for pay-per-click links that refer to services competitive to the trademark owner is evidence of bad faith registration and use. Comerica Bank v. Isaac Goldstein, WIPO Case No. D2015-1997.
The fact that the Respondent is also known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is a further indication of the Respondent’s bad faith registration and use of the Domain Name in the instant case. The Panel’s search of previous UDRP cases showed 18 decisions against this Respondent finding bad faith registration of third party trademarks and ordering transfer or cancellation of the domain names in question. See, e.g., Blue Grass Automotive, Inc. dba Blue Grass Motorsport v. Domain Hostmaster, Customer ID: 03313550483336 / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-1511 (finding that the respondent is a serial cybersquatter); Comisión Federal de Electricidad v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-2303 (noting the 18 domain name awards against the respondent).
The Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) 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 Domain Name <geicorewards.com> be transferred to the Complainant.
Date: August 28, 2016