WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services Ltd.
Case No. D2019-0879
1. The Parties
The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama.
2. The Domain Names and Registrar
The disputed domain names <geiceo.com>, <geicgo.com>, <geici.com>, <geicio.com>, <geicoamersc.com>, <geicoc.com>, <geicoi.com>, <geicomilitary.com>, <geicoprivlages.com>, <geicpo.com>, <geicto.com>, <geikodirect.com>, <geiuco.com>, <giecho.com>, <giecoautoinsurance.com>, <gieco-geico.com>, <hgeico.com>, <tgeico.com>, and <wwwigeico.com> (together 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 April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with some of the Disputed Domain Names. On April 22, 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 sent an email communication to the Complainant on April 25, 2019, requesting a clarification regarding some of the Disputed Domain Names. The Complainant filed an amended Complaint on April 26, 2019, adding an additional two Disputed Domain Names to the original Complaint. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional two Disputed Domain Names. On April 30, 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, 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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 29, 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 provider incorporated under the laws of the state of Maryland, United States. It has provided insurance services since 1936. It does so under the trademark GEICO and owns various United States registered trademarks in respect of that term (e.g. Registration No. 763,274 dated January 14, 1964). The Complainant’s GEICO trademarks are referred to collectively in this decision as the “GEICO trademark”. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. It has over 16 million policies and insures more than 27 million vehicles. It also has over 40,000 employees. It promotes its business via a website located at “www.geico.com”.
The Disputed Domain Names in this proceeding are as follows:-
<geicoi.com> created on April 5, 2009; <geicio.com> created on August 17, 2008; <geiceo.com> created on January 6, 2005; <geicgo.com> created on April 19, 2007; <geici.com> created on June 5, 2004; <geicoamersc.com> created on June 2, 2007; <geicoc.com> created on January 22, 2006; <geicomilitary.com> created on December 10, 2009; <geicoprivlages.com> created on July 18, 2010; <geicpo.com> created on April 11, 2006; <geicto.com> registered on March 5, 2019; <giecho.com> created on November 20, 2005; <gieco-geico.com> created on August 8, 2016; <giecoautoinsurance.com> created on November 12, 2005; <hgeico.com> created on October 29, 2006; <tgeico.com> created on August 25, 2007; <wwwigeico.com> created on July 14, 2008; <geikodirect.com> created on September 13, 2002; and <geiuco.com> created on April 11, 2006.
These Disputed Domain Names resolve (usually after several redirections) to a number of different third party websites or to pages containing pay-per-click (“PPC”) links. Most of the Disputed Domain Names are also offered for sale by means of advertisements contained on the WhoIs page for the name in question. Prices range from USD 500 to USD 5000.
5. Parties’ Contentions
The Complainant says all of the Disputed Domain Names are either typographical misspellings of its GEICO trademark, or combine its GEICO trademark with non-distinctive descriptive words or feature its GEICO trademark in a confusing manner. Further details as to the Complainant’ analysis in this regard are discussed below.
The Complainant says it has not authorized or consented to the Respondent’s use of its GEICO trademark. It says that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Complainant contends that each of the Disputed Domain Names was registered and used in bad faith. Whilst it sets out its arguments at length, it is only necessary to repeat its introduction to this issue: “Respondent registered the Disputed Domain Names in bad faith by doing so with knowledge of Complainant’s rights in its GEICO Mark and with an intent to profit off of those rights. It is simply inconceivable that Respondent was unaware of GEICO’s rights in the GEICO Mark when it registered, not one, but all  of the Disputed Domain Names that incorporate either Complainant’s famous federally registered GEICO Mark in its entirety, or obvious misspellings thereof”.
No Response has been filed.
6. Discussion and Findings
6.1. Preliminary Issues
A. Lack of Response
The Panel notes that no communication has been received from the Respondent. However, given that the Center formally notified the Respondent of the Complaint and sent Written Notice to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this case and to draw inferences from the Respondents’ failure to file any Response. While the Respondents’ failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents’ default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Rules allow a complaint to be filed in relation to multiple domain names when the domain names are all registered by the same domain name holder – see paragraph 3(c) of the Rules. That is the case in respect of all the Disputed Domain Names and, accordingly the Panel finds the Complaint is properly constituted.
6.2. Substantive Issues
To succeed in these proceedings the Complainant must make out its case under paragraph 4(a) of the Policy. Namely, the Complainant must prove in respect of each Disputed Domain Name that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
Given the large number of Disputed Domain Names involved in this case the Panel approaches this issue by identifying the applicable principles, as follows:
(i) The comparison to be made is between the GEICO trademark and each of the Disputed Domain Names.
(ii) The Panel considers that the addition of a descriptive term to the Complainant’s trademarks in order to form a Disputed Domain Name has little, if any, effect on a determination of confusing similarity between the Disputed Domain Name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
(iii) Furthermore, mere addition of a non-distinctive or descriptive term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
(iv) Alternatively misspelling or minor typographical variations of the GEICO trademark are also confusingly similar. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely, “[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”.
(iv) It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not normally affect the Disputed Domain Dame for the purpose of determining whether it is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
If these principles are applied to the facts of this case, it will become apparent that the majority of the Disputed Domain Names fall into various categories, as identified by the Complainant, as follows:
(a) Those involving a minor typographical variation or misspelling of the GEICO trademark (<geiceo.com>, <geicgo.com>, <geici.com>, <geicio.com>, <geicoc.com>, <geicoi.com>, <geicpo.com>, <geicto.com>, <geiuco.com>, <giecho.com>, <hgeico.com>, and <tgeico.com>).
(b) Those combining the GEICO trademark (or a misspelling of it) with a descriptive term (or a misspelling of a descriptive term) (<geicomilitary.com>, <geicoprivlages.com>, <geikodirect.com>, and <giecoautoinsurance.com>).
(c) Those using “geico” as the predominant feature of the Disputed Domain Name in a way which is clearly confusing but does not fall within the two preceding categories (<geicoamersc.com>, <gieco-geico.com>, and <wwwigeico.com>).
The Panel considers on this basis that all of the Disputed Domain Names are confusingly similar to the Complainant’s GEICO trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use any of the Disputed Domain Names or to use its GEICO trademark. The Complainant has rights in its GEICO trademark which also precede the Respondents’ registration of any of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in any of the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or legitimate interests in any of the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled in relation to them.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that (iv) applies as the Disputed Domain Names are each likely to attract traffic because of confusion with the Complainant’s GEICO trademark, and the Respondent presumably derives commercial gain as a result. Some of the websites linked to the Disputed Domain Name comprises a series of PPC links to other third-party websites. Others of the Disputed Domain Names resolve (generally by a series of changing redirections) to third party websites. The Panel infers that the Respondent presumably earns “click through” or other linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
See also WIPO Overview 3.0, section 3.5: “[p]articularly with respect to ‘automatically’ generated [PPC] links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.
In summary, in the present case, it seems clear that over many years the Respondent has registered a series of Disputed Domain Names all confusingly similar to the Complainant’s GEICO trademark and this is part of a deliberate enterprise seeking to derive revenue as a result of traffic arriving at websites linked to the Disputed Domain Names in question. That traffic will typically arrive because of a mistake made by the user concerned in typing or searching for a website associated with the Complainant.
Further the Panel notes that the Respondent has not filed a Response. Whilst the Panel cannot conceive of any credible case of good faith that the Respondents might have, their failure to even attempt to explain such a case reinforces the Panel’s view. The Panel concludes that no case of good faith exists.
As a result the Panel finds that all of the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled for all of the Disputed Domain Names.
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 <geiceo.com>, <geicgo.com>, <geici.com>, <geicio.com>, <geicoamersc.com>, <geicoc.com>, <geicoi.com>, <geicomilitary.com>, <geicoprivlages.com>, <geicpo.com>, <geicto.com>, <geikodirect.com>, <geiuco.com>, <giecho.com>, <giecoautoinsurance.com>, <gieco-geico.com>, <hgeico.com>, <tgeico.com>, and <wwwigeico.com> be transferred to the Complainant.
Nick J. Gardner
Date: June 11, 2019