WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. WhoisGuard, Inc. / Basava, Swamy
Case No. D2019-0595
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 WhoisGuard, Inc. of Panama City, Panama / Basava, Swamy of Hyderabad, India.
2. The Disputed domain name and Registrar
The disputed domain name <geicoo.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2019, 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 the Complainant on March 20, 2019 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 March 21, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Disputed domain name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Disputed domain name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Disputed 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 March 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 18, 2019. 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. It offers numerous types of insurance services including but not limited to automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance.
The Complainant has been trading under the trademark GEICO for nearly 80 years and it holds registered trademarks and service marks that wholly incorporate the GEICO mark, including registration number 763,274 GEICO, registered on January 14, 1964 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.
The disputed domain name was registered on June 26, 2018 and resolves to an active website that mentions and contains the logos of various insurance companies as well as articles on other issues such as recent apps.
5. Parties’ Contentions
The Complainant submits that its trademark is well known and argues that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name is thus a typosquatted version of the Complainant’s trademark, since it contains the trademark in its entirety with the addition of an “o” in the end.
The Complainant further argues 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 disputed domain name in connection with any bona fide offering of goods or services.
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 disputed domain name. The Complainant asserts that the Respondent is using and has used the disputed domain name to intentionally attempt to attract Internet users and consumers looking for legitimate GEICO services to the Respondent’s own webpage. The Respondent thus rides on the goodwill of the Complainant’s trademarks and exploits Internet traffic destined for the Complainant. The use of the disputed domain name for a website that promotes the goods and services of various third parties unrelated to the Complainant, including direct competitors of the Complainant, is a conduct that clearly demonstrates bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <geicoo.org> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark GEICO since the only difference is the addition of the letter “o” at the end of the term. The generic Top-Level Domain “.org” does not dispel a finding of confusing similarity.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances, which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and the evidence on record of the longstanding use of the Complainant’s trademark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent is using the disputed domain name actively for a website that mentions various insurance services, that are offered by competitors to the Complainant as it is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Noting that the disputed domain name incorporates a registered and distinctive trademark, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the disputed domain name is used for a website that promotes the goods and services of various third parties that are unrelated to the Complainant and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case.
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 <geicoo.org> be transferred to the Complainant.
Date: May 1, 2019