WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Salman Sarwar
Case No. D2020-1176
1. The Parties
Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Salman Sarwar, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <egeicoinsurance.com> 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 May 11, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2020, 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on June 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
Complainant (Government Employees Insurance Company (GEICO)), is an insurance provider incorporated under the laws of the state of Maryland, United States. Per Complaint, Complainant is a well-known insurance company that has provided insurance services since 1936. Complainant has over 17 million policies and insures more than 28 million vehicles. It has over 40,000 employees, and is one of the fastest-growing auto insurers in the United States. In connection with its insurance products and services, Complainant uses the mark GEICO for nearly 80 years, engaging in extensive advertising, including television advertising, featuring its name and mark and has offices throughout the world. Complainant provides its services also through its website at “www.geico.com”. Complainant’s website enables users to access information regarding Complainant’s insurance services, manage their policies and claims, learn more about Complainant and obtain insurance quotes.
Complainant owns various trademark registrations for GEICO including: United States trademark registration GEICO (word) no. 763274, filed on December 6, 1962 and registered on January 14, 1964 for services in international class 36 and United States trademark registration GEICO (word) no. 2601179 filed on January 25, 2001 and registered on July 30, 2002, for services in international class 36.
The Domain Name was registered on April 12, 2020 and resolves to a website displaying a WordPress template that purports to be related to insurance quotes and Complainant, identifying Complainant as “E Geico Insurance” and including content largely copied from a Wikipedia® page about Complainant’s business and services (the “Website”).
Complainant sent a cease and desist letter to Respondent’s email address of record on April 15, 2020, to which Respondent did not reply.
After the lapse of the time limit to submit a response, Respondent sent two emails to the Center expressing Respondent’s willingness to transfer the Domain Name to Complainant upon a payment.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not submit a formal response and did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name incorporates Complainant’s trademark GEICO in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letter “e” at the beginning of the Domain Name and the descriptive word “insurance”, does not prevent a finding of confusing similarity (Government Employees Insurance Company v. Savvy Investments, LLC Privacy ID# 836539, WIPO Case No. D2019-2406, Government Employees Insurance Company (“GEICO”) v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-0596, Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the GEICO mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (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) 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent has not demonstrated any preparations to use or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name was used to host the Website to impersonate Complainant and attempt to mislead consumers into thinking that the insurance services purportedly offered on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of services nor a legitimate interest of Respondent (WIPO Overview 3.0, section 2.13.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the GEICO mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business (services), provided also online (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, the content of the Website gives the impression that it provides insurance services, namely services in the same field of business as those provided by Complainant, prominently displaying Complainant’s trademark GEICO on the Website, and identifying Respondent as “e - Geico Insurance”, thereby giving the false impression that the Website emanates from Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).
The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).
Furthermore, Respondent could have conducted a trademark search and should have found Complainant’s prior registrations in respect of GEICO (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
As regards bad faith use, Complainant demonstrated that the Domain Name is used to host a Website which purports to offer insurance services related to Complainant. The Website, prominently displaying Complainant’s GEICO trademark, is a WordPress template with no genuine substantive content, containing information on Complainant and its services, largely reproduced from a Wikipedia® page about Complainant.
The Panel finds that Respondent has registered and used the Domain Name in order to prevent Complainant from reflecting its trademark and trade name in a corresponding domain name and to disrupt its business. Furthermore, the Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).
Under these circumstances and on this record, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <egeicoinsurance.com> be transferred to Complainant.
Date: June 29, 2020