WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Contact Privacy Inc. Customer 0139602496. / ICS INC.
Case No. D2017-0617
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 Contact Privacy Inc. Customer 0139602496. of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <partnergeico.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2017, 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 March 29, 2017 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 April 3, 2017.
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 April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 2, 2017. 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 is a well-known insurance company that has provided insurance services since 1936. It offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others.
The Complainant has been trading under the trademark GEICO for nearly 80 years and owns exclusive rights in such. The Complainant holds registered trademarks and service marks that wholly incorporate the GEICO mark, including registration number 763,274 GEICO, registered on January 14, 1964 and registration number 1,442,076 GEICO DIRECT, registered on June 9, 1987, both with the United States Patent and Trademark Office.
The Complainant has used the GEICO trademark extensively over the years, and it has established a website located at "www.geico.com" to promote and sell its motor vehicle insurance services.
According to the Registrar, the date of expiry of the Domain Name is April 29, 2018. At the time of filing the Complaint, as well as at the time of drafting this decision, the Domain Name resolved, via redirection, to a number of rotating third-party websites including unrelated websites that feature services that are in fields related to those of the Complainant and/or appear to serve up malicious malware attacks.
5. Parties' Contentions
The Complainant provides trademark registrations, and submits that its trademark is well known. The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademark. The Domain Name incorporates the whole of the Complainant's trademark, adding only the falsely descriptive and generic term "partner".
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the GEICO trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Complainant argues that the Respondent's misappropriation of the GEICO mark in the Domain Name was no accident. Where a mark is famous, as in the instant case, it is "not one traders would legitimately choose unless seeking to create an impression of an association" (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant's famous trademark at the time of the registration of the Domain Name. The Complainant believes that the Respondent is using and has used the Domain Name to intentionally attempt to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to the Respondent's own webpage. The Respondent rides on goodwill of the Complainant's trademarks and exploits Internet traffic destined for the Complainant. The use of the Domain Name to redirect users to various third-party sites, including unrelated websites that feature services that are in fields related to those of the Complainant and/or serve up malicious malware attacks, is conduct that clearly demonstrates bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark GEICO.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant's trademark GEICO, with the prefix "partner" added. The addition does not dispel any confusing similarity. On the contrary, it adds to the confusion.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent's use of the GEICO mark in the Domain Name seems to be no coincidence. It creates an impression of an association with the trademark. The use of the Domain Name to redirect users is not legitimate.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant's trademark and its business when the Respondent registered the Domain Name. The Respondent is using and has used the Domain Name to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners. The use of the Domain Name to redirect users to various third-party sites, including unrelated websites that feature services that are in fields related to those of the Complainant and/or appear to serve up malicious malware attacks, causes harm to the Complainant. It is indeed a conduct that demonstrates bad faith.
The Panel finds that on the balance of probabilities the Respondent registered and uses the Domain Name in bad faith. The finding is supported by the fact that the Respondent has not responded to the Complainant's cease-and-desist letter, or the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 <partnergeico.com> be transferred to the Complainant.
Date: May 4, 2017