WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc. / Scott M Massey
Case No. D2018-0018
1. The Parties
Complainant is Government Employees Insurance Company of Washington, DC, United States of America ("United States"), represented by Burns & Levinson LLP, United States.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Scott M Massey of Murrieta, Alabama, United States.
2. The Domain Names and Registrar
The disputed domain name, <geico.promo> (the "Domain Name"), is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 10, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 10, 2018.
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 Respondent of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2018.
The Center appointed John C. McElwaine as the sole panelist in this matter on February 21, 2018. 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, Government Employees Insurance Company (GEICO), is an American insurance company that has provided insurance services since 1936. Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others.
Complainant owns multiple trademarks and service marks that wholly incorporate the GEICO mark that are registered with the United States Patent and Trademark Office ("USPTO"), including: GEICO registered in Classes 35 and 36, No.763274 (January 14, 1964); GEICO registered in Class 36, No. 2601179 (July 30, 2002); GEICO DIRECT registered in Class 16, No. 1442076 (June 9, 1987); GEICO DIRECT registered in Class 36, No. 2071336 (June 17, 1997); GEICO AUTO REPAIR XPRESS registered in Class 36, No. 2982260 (August 2, 2005); and GEICO MOTORCYCLE registered in Class 36, No. 3262263 (July 10, 2007).
Respondent registered the Domain Name with the Registrar on November 13, 2017. The Domain Name was linked to a website displaying car insurance information. Currently, the Domain Name does not resolve to a functioning webpage.
5. Parties' Contentions
Complainant alleges to be a well-known insurance company that has provided insurance services since 1936. Complainant claims to have used the trademark GEICO (the "GEICO Mark") for nearly 80 years in connection with its insurance business.
Complainant asserts that it has made extensive use of the GEICO Mark in connection with its insurance services investing large sums of money to promote and develop the GEICO Mark through television, print media, and the Internet. As a result of such efforts, Complainant contends that the GEICO Mark is a strong mark that has acquired significant distinctiveness. To illustrate this point, Complainant asserts that it has over 13 million policies and insures more than 22 million vehicles. In addition, Complainant has more than 30,000 employees, and is one of the fastest-growing auto insurers in the United States.
Complainant further alleges that it owns and operates a website located at "www.geico.com", which Complainant uses to promote and sell its motor vehicle insurance services. It is alleged that the "www.geico.com" website enables computer users to access information regarding GEICO's insurance services, manage their policies and claims, learn more about GEICO and obtain insurance quotes.
Complainant asserts that after becoming aware of the Domain Name, counsel for GEICO contacted Respondent to request that Respondent cease its infringing use of the GEICO Mark and transfer the Domain Name to GEICO. Respondent did not respond to Complainant's demand letter and this proceeding was instituted.
With respect to the first element of the Policy, Complainant contends that the Domain Name is identical to its GEICO Mark and that it is well established that merely adding a generic Top-Level Domain ("gTLD") to a domain name that fully incorporates a trademark is insufficient to distinguish a domain name from a trademark.
With respect to the second element of the Policy, Complainant states that it has no connection with Respondent and has not authorized Respondent to use the Domain Name. In addition, Complainant asserts that GEICO is a famous mark. In addition, Complainant contends that Respondent has never been known by the Domain Name. Therefore, Complainant alleges that the only conceivable explanation for the registration of the Domain Name is to take unfair advantage of the trademark rights of Complainant.
With respect to the third element of the Policy, Complainant alleges Respondent registered the Domain Name in bad faith with knowledge of Complainant's rights in the GEICO Mark and with intent to profit off of those rights. Complainant asserts that it would be inconceivable that Respondent was unaware of GEICO's rights in the GEICO Mark when undertaking registration because GEICO engages in extensive advertising, and as a unique term a simple Internet search for GEICO would have revealed Complainant's use of the GEICO Mark. In addition, Complainant alleges that Respondent knew or should have had constructive knowledge of Complainant's GEICO Mark due to Complainant's various trademark and service mark registrations. Moreover, Complainant alleges that Respondent's use of the Domain Name to promote insurance services suggests it is familiar with Complainant's insurance services.
Complainant further claims that Respondent's use of the Domain Name to direct visitors to insurance services providers that offer services competitive with Complainant is evidence of bad faith use. Complainant asserts that Respondent must have expected that any use of the Domain Name would cause harm to Complainant because it would inevitably lead to a likelihood of customer confusion. As such, it is alleged that Respondent has engaged in bad faith use of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established trademark rights in the GEICO Mark as evidenced by its trademark registrations and its substantial and long-standing use of the GEICO Mark in connection with insurance services. The Domain Name consists of the identical word GEICO followed by the gTLD ".promo", which does not serve to distinguish the Domain Name from the GEICO Mark at all.
The Panel finds that Complainant has met its burden of showing that the Domain Name is identical or confusingly similar to the GEICO Mark in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Complainant contends Respondent has not received any license or consent, express or implied, to use the GEICO Mark in a domain name or in any other manner. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point.
Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
"(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.
There is no evidence to suggest that Respondent has ever used, or made preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Therefore, Respondent cannot establish rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy. Respondent is using the Domain Name in connection with a website that purports to offer information and insurance quotes from competitors of Complainant. However, no information is provided about Complainant or its insurance services. Respondent's website contains no indicator of the source of the information and services leading one to reasonably conclude that it must be related to Complainant. Here, given that Respondent has used a domain name identical to Complainant's GEICO Mark and no other source of the website is provided, the Panel finds that the Domain Name is not connected with a bona fide offering of services. See e.g., Six Continents Hotels, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Peiyan Yao, WIPO Case No. D2013-0660 (finding that Respondent who developed a website at "www.hotelindigoshanghai.com" was not using this domain name in connection with a bona fide offering of services where competing hotel reservations could be made for Complainant's hotel).
Lastly, Respondent's use of the Domain Name is not "noncommercial or fair use" under paragraph 4(c)(iii) of the Policy, given that Respondent purports to offer information and insurance quotes for competitors of Complainant. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (respondent's "website was clearly and obviously a site that was highly critical of Complainant").
To the extent that Respondent may be considered a "reseller" or agent for insurance services, the Panel finds that the requirements set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), even if applicable here, could not be met. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including that Respondent must actually be offering the services related to the trademark referenced in the domain name. In this case, Respondent is not apparently providing information and insurance quotes for Complainant. Instead, potential customers are linked to Respondent's website and are offered information and quotes for competing insurance companies.
Accordingly, Complainant has made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent registered and is using the Domain Name in bad faith as evidenced by the allegations that (i) Respondent knew or should have known of Complainant's trademark rights in the well-known GEICO Mark; and (ii) Respondent's use of the Domain Name was to direct visitors to insurance services providers that offer services that are competitive with Complainant.
Bad faith registration can be found where a respondent "knew or should have known" of a complainant's trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant's submissions, which were not rebutted by Respondent, Respondent must have known of Complainant's GEICO Mark when it decided to register the Domain Name, which fully incorporates Complainant's GEICO Mark in its entirety. The GEICO Mark was substantially used for decades prior to registration and was the subject of several United States trademark registrations. With no response from Respondent, this claim is undisputed.
With respect to bad faith use, Complainant contends that the Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with the GEICO Mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Respondent did not respond to the Complaint and has provided no justification for the use of the Domain Name in connection with its website. In fact, Respondent is not using the Domain Name in any manner to demonstrate a bona fide use. However, it is clear that the Domain Name was chosen and is being used to draw an association with Complainant. The term GEICO is well-known in the United States and is a coined term. In light of these factors, the Panel finds that Respondent's use of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by Respondent.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark, by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name, <geico.promo>, be transferred to the Complainant.
John C McElwaine
Date: March 7, 2018