WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited

Case No. D2020-2393

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <givebackgeico.com> (the “Domain Name”) is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2020 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 September 21, 2020.

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 September 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.

The Center appointed Jon Lang as the sole panelist in this matter on October 29, 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 a well-known insurance company that has provided insurance services since 1936. It offers a variety of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella and overseas insurance.

The Complainant has been trading under the trademark GEICO (the “GEICO Mark or “Mark”) for nearly 80 years. It owns numerous registered trademarks and service marks that wholly incorporate the GEICO Mark or iconic visual representations thereof, including the following United States Patent and Trademark Office (“USPTO”) registrations:

- GEICO – Registration No: 763,274 / Registration Date: January 14, 1964;

- GEICO – Registration No: 2,601,179 / Registration Date: July 30, 2002;

- GEICO AUTO REPAIR XPRESS – Registration No: 2,982,260 / Registration Date: August 2, 2005;

- GEICO MOTORCYCLE – Registration No: 3,262,263 / Registration Date: July 10, 2007.

The Complainant has a website at “www.geico.com” which it uses to promote and sell its motor vehicle insurance services, and which enables Internet users to access information concerning the Complainant’s services, and manage their policies and claims etc.

The 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 U.S.

The Domain Name <givebackgeico.com> consists of the GEICO Mark with the addition of the words “give back” (and the generic Top Level Domain (“gTLD”) “.com”). The Respondent registered the Domain Name on August 10, 2020 and the WhoIs record indicates that it has been for sale for between USD 694 and USD 925. The Domain Name currently resolves to a website containing a list of apparent pay-per-click (“PPC”) links to unrelated third-party websites, including to websites of the Complainant’s competitors, such as United Services Automobile Association (“USAA”).

After becoming aware of the Domain Name, counsel for the Complainant wrote to the Respondent to request that it ceases its use of the GEICO Mark and transfer the Domain Name, but there has been no response.

5. Parties’ Contentions

A. Complainant

The following is a summary of the main assertions of the Complainant.

General

The Complainant has made extensive use of its distinctive GEICO Mark in connection with its services and invests large sums of money to promote and develop its Mark through television, print media and the Internet. As a result of such efforts, the GEICO Mark is a powerful and recognizable symbol of the Complainant’s goodwill and excellent reputation, and it has become uniquely associated with the Complainant and its services.

The Complainant has not authorized the Respondent’s use of the GEICO Mark or registration of the Domain Name. The Respondent’s unauthorized use of the Domain Name severely harms the Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the U.S. and around the world.

There is no evidence that the Respondent has any legitimate claims to the Domain Name and any current or conceivable future use of the Domain Name violates (or will violate) the Policy.

The Domain Name is identical or confusingly similar to the GEICO Mark.

UDRP panels have consistently held that domain names are identical or confusingly similar to trademarks when they include the trademark and “regardless of the other terms in the domain name”, e.g., L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011- 1627, in which transfers were ordered despite the inclusion of non-distinctive suffixes or prefixes, none of which distinguished the domain names from the relevant trade marks in any significant way.

The Domain Name incorporates the distinctive GEICO Mark and so is identical or confusingly similar to it, regardless of the additional terms it contains. Its use is intended to impersonate the Complainant and intercept and confuse consumers who are looking for bona fide and well-known products and services of the Complainant, or authorized partners.

The Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the GEICO Mark in a domain name or in any other manner.

Furthermore, the Complainant believes that the Respondent has never been known by the Domain Name.

The Respondent’s misappropriation of the GEICO Mark in the Domain Name was no accident; where a mark is famous, as it is here, it is “not one traders would legitimately choose unless seeking to create an impression of an association” (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The use of the Domain Name to redirect Internet users to third-party websites does not constitute a right or legitimate interest.

The Domain Name was registered and is being used in bad faith.

The Complainant believes that the Respondent is using and has used the Domain Name to intentionally attempt to attract, to its own webpage, Internet users and consumers looking for legitimate services of the Complainant and/or authorized partners, by creating a likelihood of confusion with the Complainant, all for commercial gain.

Given the well-known and distinctive character and reputation of the GEICO Mark, the Respondent must have been aware of the Complainant (and its Mark) when registering the Domain Name.

The Respondent’s use of the GEICO Mark to attract Internet users to its website, knowing that the Complainant had not authorized it to do so, is evidence of bad faith.

The Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. Wholly incorporating the GEICO Mark is obviously indicative of authorization, the Respondent’s use would inevitably lead to confusion.

The Complainant’s rights in the GEICO Mark would have been obvious through basic domain name searches and searches of the USPTO records that are readily accessible online. The Respondent is thus deemed to have constructive notice of the Complainant’s trademark rights by virtue of its federal registrations.

That the Domain Name resolves to a website containing apparent PPC hyperlinks to third-party websites featuring services provided by the Complainant’s competitors, also constitutes evidence of bad faith.

The fact that the Respondent has listed the Domain Name for sale suggests that its sole purpose was resale. This strongly suggests that the Respondent was aware of the Complainant’s trademark and its business when it registered the Domain Name, and that its intention was financial gain, all in bad faith.

The Respondent has a history of abusively registering and using domain names incorporating third-party trademarks, e.g., Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-1779, Crédit Industriel et Commercial S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-1763, and CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-0991.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a 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. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in its GEICO Mark.

Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the GEICO Mark but it is preceded by the words “give” and “back”.

Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity. The GEICO Mark is clearly recognizable within the Domain Name. The addition of the words “give” and “back” do not prevent confusing similarity. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Domain Name is confusingly similar to the GEICO Mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it 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. Here, however, the Respondent is not commonly known by the Domain Name, and given the nature of the website to which the Domain Name resolves (featuring links to third-party websites some of which directly compete with the Complainant’s business), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element of which is the Complainant’s well-known GEICO Mark, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party (and in some cases, competing) websites. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. Indeed, in Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. This seems to be the case here, particularly given the nature of the website to which the Domain Name resolves, i.e., containing links to insurance related sites. The fact that the insurance related links on the website may be automatically generated is nothing to the point; a respondent is responsible for them and cannot escape responsibility. (See section 3.5 of the WIPO Overview 3.0, albeit dealing with the point under “bad faith”).

In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a 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 a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other on-line location) or of products or services on it.

It seems very likely that the Respondent was aware of the GEICO Mark at the time of registration of the Domain Name and has sought to create a misleading impression of association with the Complainant. It can be fairly readily assumed that the Respondent derives (or has the opportunity to derive) some commercial benefit from click through revenue generated by the website to which the Domain Name resolves.

The circumstances of this Complaint mirror the example of circumstances illustrative of bad faith registration and use described above (taken from paragraph 4(b)(iv) of the Policy). The Complainant would no doubt succeed in demonstrating bad faith registration and use for the purposes of the Policy on other grounds too, but given the finding above, there is little point in exploring these further.

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <givebackgeico.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: November 6, 2020