WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Johnathan Vicente
Case No. D2019-0877
1. The Parties
The Complainant is Government Employees Insurance Company, United States of America (the “United States”, represented by Burns & Levinson LLP, United States.
The Respondent is Johnathan Vicente, United States.
2. The Domain Name and Registrar
The disputed domain name <geicorecruit.info> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2019, 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 Center verified that 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 April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Steven Auvil as the sole panelist in this matter on May 27, 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, incorporated in Maryland, United States, is an insurance provider that has offered numerous types of insurances services since 1936. The Complainant has over 40,000 employees, services over 16 million policies and insures more than 27 million vehicles. The Complainant has traded under the well-known trademark GEICO for nearly 80 years. The Complainant is also the owner of several marks with the term GEICO, including United States Registration No. 763,274 (registered on January 14, 1964); United States Registration No. 2,601,179 (registered on July 30, 2002); United States Registration No. 1,442,076 (registered on June 9, 1987) for GEICO DIRECT; United States Registration No. 2,982,260 (registered on August 2, 2005) for GEICO AUTO REPAIR XPRESS; and United States Registration No. 3,262,263 (registered on July 10, 2007) for GEICO MOTORCYCLE.
The Complainant officially promotes and sells its insurance products and services through the website “www.geico.com”, which was registered on July 22, 1995. The Complainant also uses this website for its customers to access information regarding their policies, manage their policies and claims, learn more about the Complainant and obtain insurance quotes.
The disputed domain, <geicorecruit.info> was registered on March 17, 2019. The disputed domain name resolves to a website that also uses the Complainant’s GEICO trademarks.
5. Parties Contentions
The Complainant asserts that the disputed domain name is identical or confusingly similar to the GEICO trademarks because it reproduces these marks with the addition of a generic term “recruit” along with a generic top level domain (gTLD). The Complainant alleges ownership in a family of GEICO marks federally registered in the United States.
The Complainant alleges that it has not authorized Respondent’s use of the GEICO trademarks or the disputed domain name, and that Respondent is not an affiliate of the Complainant. The Complainant further alleges that the Respondent has no rights or legitimate interest in the term GEICO. The Complainant alleges that it searched for but found no information that support legitimate rights of the Respondent in the disputed domain name.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent with an intent to profit off those rights. The Complainant argues that that the Respondent’s use of the term GEICO in the disputed domain name is an intentional effort by the Respondent to divert Internet users searching for GEICO products and services to the disputed domain name for commercial gain, thereby creating confusion. The Complainant argues that the Respondent must have known of the Complainant’s rights in the GIECO trademarks and its reputations, because the Complainant has engaged in extensive advertising, including television advertising, featuring its name and the GEICO trademarks. The Complainant further alleges that an Internet search would have revealed the Complainant’s extensive use of its GEICO marks as a source identifier.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is an insurance provider that has used the tradename GEICO for nearly 80 years. The Complainant is also the owner of various United States federally registered trademarks, with the term GEICO, with the earliest mark registered in 1964. In addition to its registered trademarks, the Complainant promotes its products and services through the website “www.geico.com”. The Complainant has also engaged in extensive advertising, including television advertising, featuring its name and the GEICO trademarks and has offices throughout the world.
The disputed domain name incorporates the entirety of the GEICO mark and appends the term “recruit”. Several other UDRP panels have concluded that the addition of a descriptive or generic term comparable to “recruit” to a complainant’s trademark is insufficient to distinguish the disputed domain name from the complainant's trademark. See for example, Six Continents Hotels, Inc. v. WhoisSecure, WhoisSecure / Gary Foster, NA, Whois WIPO Case No. D2018-2871 (transferring <crowneplazahotelworldrecruitment.com >); Accor and SoLuxury HMC v. Kelvin Osas, Ke, WIPO Case No. D2017-0692 (transferring sofitelrecruithr.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>). Moreover, the applicable gTLD in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Panel Views 3.0”).
In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the GEICO trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the Complainant’s allegations and evidence, the GEICO trademarks are distinctive and well-known trademarks that are registered in the United States by the Complainant. Moreover, the Complainant did not license or otherwise authorize use by the Respondent of the GEICO trademarks in the United States. In the Panel’s view, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 2.1 of WIPO Panel Views 3.0, provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Paragraph 4(c) of the Policy provides examples of what may show rights or legitimate interests in a domain name. For example, (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that the respondent has been “commonly known by the domain name”; or (iii) “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.”
Here, the Respondent has failed to respond to the Complainant’s contentions and offer any rebuttal that would demonstrate that he has rights or legitimate interests in the disputed domain name. Moreover, from the Complainant’s allegations, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to generate traffic and income for the disputed domain name.
As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’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 [respondent’s] website or location or of a product or service on [the] website or location”.
Here, the Complainant alleges that the Respondent is using the disputed domain to generate traffic and income by intercepting and confusing the public when searching for bona fide and well-known GEICO® products and services or authorized partners. The Respondent’s website associated with the disputed domain name also features the Complainant’s GEICO trademarks, the use of which has not been authorized by the Complainant.From this evidence, it is reasonable to infer that the Respondent is attempting to trade on the Complainant’s rights in the GEICO marks by engendering confusion for the purpose of commercial gain. Compare Alstom v. Yulei, WIPO Case No. D2007-0424 (panelist concluding that, given widespread reputation of the Complainant’s trademarks, the Respondent intended to ride on goodwill of the Complainant’s trademarks and attempted to exploit, for commercial gain, Internet traffic destined for the Complainant where the Respondent registered and used domain name confusingly similar to the Complainant’s trademarks); Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from the Complainant’s website is evidence of bad faith); and Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861 (finding bad faith registration and use because respondent was “attracting traffic that he would otherwise not get for his website”).
Moreover, in the Panel’s view, based also on the extensive use of the GEICO marks in connection with goods and services in the United States, the Respondent must have been aware of the GEICO trademarks when he registered the disputed domain name. Just like the panel in LEGO Juris A/S v. Danaka Tarou, WIPO Case No. D2015-0315, the Panel in this case finds that the only credible explanation for the use of the disputed domain name is to capitalize on the similarity between it and the Complainant’s distinctive and well-known GEICO trademarks.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met.
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, <geicorecruit.info> be transferred to the Complainant.
Date: June 13, 2019