WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-2527
1. The Parties
The Complainant is Government Employees Insurance Company of Washington, D.C., United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <geicco.com>, <geicho.com>, and <gicko.com> (the “Disputed Domain Names”) are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 6, 2018, 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 Complainant filed an amendment to the Complaint on November 7, 2018 to address an administrative formality.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 10, 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
The Complainant is an insurance company that has provided insurance services since 1936. The Complainant offers numerous types of insurance services including, among others, automobile, motorcycle, homeowners, mobile home.
The Complainant has been trading under the trademark GEICO for nearly 80 years and owns exclusive rights in such name.
The Complainant holds a number of trademark registrations in the United States, including the following:
- GEICO - Registration No. 763,274, registered on January 14, 1964;
- GEICO DIRECT - Registration No. 2,071,336, registered on June 17, 1997;
- GEICO - Registration No. 2,601,179, registered on July 30, 2002; and
- GEICO AUTO REPAIR - Registration No. 2,982,260, registered on August 2, 2005.
The Complainant has over 16 million policies and insures more than 27 million vehicles.
Moreover, the Complainant has established a website located at “www.geico.com”, which the Complainant uses to promote and sell its good and services.
The Disputes Domain Names are the following:
<geicco.com> registered on May 18, 2004;
<gicko.com> registered on August 20, 2002; and
<geicho.com> registered on November 21, 2005.
The websites of the Disputed Domain Names resolve, via redirection, to a number of rotating third party websites that are not affiliated with the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Names fully incorporate common or obvious misspellings of the Complainant’s trademark. Moreover, the Disputed Domain Names are confusingly similar to the Complainant’s trademark, for the following reasons: (i) The Disputed Domain Names merely add a “k”, “c” or “h” after the “c” creating a phonetic equivalent to the standalone “c” and/or omit the letter “e” from the Complainant’s trademark; (ii) the Disputed Domain Names are deliberate misspellings of the Complainant’s trademark; (iii) the Disputed Domain Names are visually close to the Complainant’s GEICO trademark.
Rights or legitimate interests
The Complainant submits that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademark in any way.
In addition, the Respondent has never been known by the Disputed Domain Names.
Furthermore, the Complainant states that Respondent’s misappropriation of the Complainant’s trademark in the Disputed Domain Names was no accident.
What is more, the use of the Disputed Domain Names to redirect to third party websites is not a legitimate interest.
Thus, the Respondent could not have legitimate interests in the Complainant’s trademark since it is not a name that the Respondent would have legitimately and randomly chosen to use.
Registration and use in bad faith
The Complainant alleges that the Respondent has registered the Disputed Domain Names in bad faith by doing so with knowledge of the Complainant’s rights and with intent to profit from those rights. It is inconceivable that the Respondent was unaware of the Complainant’s trademark when registering the Disputed Domain Names. Moreover, the Disputed Domain Names incorporate obvious typos of the Complainant’s trademarks.
A simple search through the Internet would have clearly indicated the rights of the Complainant.
In addition, the Complainant states that the Respondent is using the Complainant’s trademark to attract Internet users.
Finally, the Respondent registered and used the Disputed Domain Names to trade on the goodwill associated with the Complainant and its trademark by leading consumers to believe that the Respondent or its site/services are associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the GEICO trademark as evidenced by its trademark registration. Based on the evidence submitted, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark GEICO, visually and phonetically. The only differences are the addition of the letter “c” in <geicco.com>, the addition of the letter “k” between the letter “c” and “o”, and the substitution of the letter “e” by “i” in <gicko.com>, and the addition of the letter “h” between the letter “c” and “o” in <geicho.com>.
Moreover, the misspellings are also hardly noticeable and result in a very minor modification of the Complainant’s trademark, being all of them a common mistake that any Internet user can make.
This is a clear example of typo-squatting. As section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Names. In addition, the Respondent is not known by the Disputed Domain Names.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Names in bad faith.
The Disputed Domain Names were registered between the years 2002 to 2005, while the Complainant’s GEICO trademark (Registration No. 763,274) was granted on January 14, 1964.
The Panel is of the view that the Respondent registered the Disputed Domain Names in bad faith since it has used typographical misspellings of the Complainant’s well-known GEICO trademark (see, Government Employees Insurance Company v. Jaques Van der Tjark, PundaMax Holdings BV, Kaya Richard J. Beaujon Z/N, WIPO Case No. D2012-1489; Government Employees Insurance Company (“GEICO”) v. Calvin Budley, Whois Privacy Services Pty Ltd., WIPO Case No. D2012-1306). Therefore, the Panel concludes that the Respondent registered the Disputed Domain Names in bad faith.
The Panel is of the opinion that this is a clear case of typo-squatting and that the Respondent deliberately registered the Disputed Domain Names with a slight misspelling with the intent to divert Internet users from the Complainant’s website to the Respondent’s parking page. Thus, this behavior constitutes bad faith registration and use.
Moreover, the Disputed Domain Names’ websites redirect to pay-per-click links which are related to car insurance. In such way, it is implausible that the Respondent was unaware of the Complainant’s trademark at the time of the registration of the Disputed Domain Names.
In the case at hand, in view of the Respondent’s registration of the Disputed Domain Names confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Names also amounts to bad faith.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Names 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 Names, <geicco.com>, <geicho.com>, and <gicko.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: December 29, 2018