WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. Hasan Yildirim

Case No. D2020-0386

1. The Parties

The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “USA”), represented by Burns & Levinson LLP, United States.

The Respondent is Hasan Yildirim, Turkey.

2. The Domain Name and Registrar

The disputed domain name <geicomotocycle.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2020, 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 February 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint or amended Complaint.

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 March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Respondent sent an email to the Center on February 25, 2020, asking “what exactly do you want from me?”. The Respondent did not submit a formal response. Accordingly, on April 14, 2020, the Center informed the Parties it will proceed to appoint a panel.

The Center appointed Taras Kyslyy as the sole panelist in this matter on April 15, 2020. 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, USA. The Complainant has provided insurance services since 1936. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. The Complainant has over 17 million policies and insures more than 28 million vehicles. It also has over 40,000 employees, and is one of the fastest-growing auto insurers in the USA.

The Complainant has been trading under the trademark GEICO for nearly 80 years. The Complainant holds numerous trademark registrations for GEICO, including the USA registration No. 763274 registered on January 14, 1964.

In connection with its insurance products and services, the Complainant has established a website located at “www.geico.com”, which it uses to promote and sell its motor vehicle insurance services.

The disputed domain name was registered on November 26, 2019, and redirects to a parking webpage. Also, previously the disputed domain name redirected to a website used to provide consumers information about motorcycle insurance while purporting to be associated with the Complainant.

The Complainant contacted the Respondent to request cease of the infringing use of the Complainant’s trademark and transfer the disputed domain name to the Complainant. In response, the Respondent requested payment for transfer of the disputed domain name. Additionally, the Respondent admitted that it registered the disputed domain name for use as an “information platform project”, but provided no further details about that project.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name fully incorporates the Complainant’s trademark. The mere addition of the generic or descriptive misspelled word “motocycle” is not sufficient to prevent confusion of the disputed domain name with the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademark in a domain name or in any other manner. The Respondent has never been known by the disputed domain name. The Respondent’s misappropriation of the Complainant’s trademark in the disputed domain name was no accident. The Respondent could have no legitimate interest in the Complainant’s trademark since it is not a name that the Respondent would have legitimately and randomly chosen to use.

The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with knowledge of the Complainant’s rights in its trademark and with an intent to profit of those rights. The fact that the registration of the disputed domain name occurred long after the registrations of the Complainant’s trademark proves there is no conceivable explanation for the Respondent’s registration and use of the disputed domain name. The Respondent’s use of the Complainant’s trademark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so is also evidence of bad faith. The Respondent’s use of the disputed domain name to redirect visitors to a website that provides informational services on motorcycle insurance is blatant evidence of bad faith use, particularly when the Respondent is attempting to create a likelihood of confusion as to the source, sponsorship or affiliation of such website. In response to the Complainant’s cease and desist letter the Respondent requested unspecified amount of payment for transfer of the disputed domain name to the Complainant. The fact that the disputed domain name after receipt of the cease and desist letter by the Respondent started to resolve to an inactive blog site instead of a
non-affiliated information website for motorcycle insurance does not absolve the Respondent of acting in bad faith. The fact that the Respondent uses a privacy service for registering the disputed domain name is suggestive of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademarks.

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that addition of the misspelled word “motocycle” to the disputed domain name does not prevent the confusing similarity.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and well-known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark in the United States. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”. In this case, the disputed domain name was resolving to a website purporting to be associated with the Complainant to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

Although at the time of this decision the disputed domain name resolves to a parking webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <geicomotocycle.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: April 22, 2020