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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Domain Biz LLC

Case No. D2020-2868

1. The Parties

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

1.2 The Respondent is Domain Biz LLC, China (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <geicoinsurance.online> the (“Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 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 November 2, 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 amendment to the Complaint on November 2, 2020.

3.2 The Center verified that the Complaint together with the amendment to 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2020.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on December 4, 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

4.1 The Complainant in this administrative proceeding is the Government Employees Insurance Company, an insurance provider incorporated under the laws of the state of Maryland in the United States with its main office address at One Geico Plaza Washington DC 20076. The Complainant is said to have provided numerous types of insurance services since 1936 such as automobile, motorcycle, homeowner, rental, condominium, flood, mobile home, and overseas insurance among others. The Complainant it is said, has also been trading with the GEICO trademark (the “GEICO Mark”) for nearly 80 years. The Complainant’s exclusive rights in the GEICO Mark are further evidenced by the Complainant’s numerous federal registered trademarks and service marks with the United States Patent and Trademark Office (USPTO) that wholly incorporate the GEICO Mark. True copies of the trademark registrations are attached as Annex C to this proceeding. The Complainant it is said, routinely, invests large sums of money to promote and develop the GEICO Mark through television, print media and the Internet thereby creating a powerful, and recognizable symbol of the Complainant’s goodwill and excellent reputation. Furthermore, it is said that the Complainant has well over 17 million policies, insures more than 28 million vehicles and has over 40,000 employees. The Complainant has also established a website located at “www.geico.com” through which it promotes and sells its insurance services and through which computer users can access information regarding the Complainant’s services, and manage their policies and claims.

4.2 The Respondent is Domain Biz LLC who is based in China and according to the WhoIs database registered the Disputed Domain Name <geicoinsurance.online> on October 5, 2020. The Disputed Domain Name resolves to a website hosting an auction listing inviting bids to purchase the Disputed Domain Name with a minimum bid of USD 3168.00.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that the Disputed Domain Name <geicoinsurance.online> is identical or confusingly similar to the Complainant’s registered GEICO trademark regardless of the other terms in the Disputed Domain Name in that it incorporates the distinctive GEICO Mark entirely. In this regard, the Complainant relies on a previous UDRP decision in L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627. A previous UDRP decision which found confusing similarity to a complainant’s trademark established, despite the inclusion of non-distinctive suffixes or prefixes or non - distinctive generic letters or words none of which served to distinguish the disputed domain names from the trademarks in issue in any significant way. Thus, it is submitted on behalf of the Complainant that the addition of the descriptive term “insurance” to the Disputed Domain Name does not prevent a finding of confusing similarity. The Complainant further relies on a previous UDRP decision in Government Employees Insurance Company v. Salman Sarwar, WIPO Case No. D2020-1176 finding the disputed domain name <egeicoinsurance.com> to be confusingly similar to the GEICO Mark. In addition, with reliance on another UDRP decision in Government Employees Insurance Company v. Super Privacy Service Ltd c/o Dynadot, WIPO Case No. D2019-0596 finding that the disputed domain name <geicoinsurance.biz> to be confusingly similar to the GEICO Mark, it is submitted on behalf of the Complainant that the mere addition of a common term associated with the business of the trademark owner does not also prevent a finding of confusing similarity.

5.2 The Complainant also contends that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name on the following grounds. Firstly, the Respondent has no connection or affiliation with the GEICO Mark 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. Secondly, the Respondent has never been known by the Disputed Domain Name following the decision in Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 nor was the use of the GEICO Mark in the Disputed Domain Name by accident. Thirdly, it is common knowledge that where a trademark is famous just like the GEICO Mark in issue, traders would not choose such a trademark unless they want to create an impression of association with the Complainant following, a previous UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.3 As regards the question of bad faith registration and use, the Complainant contends as follows. First of all, due to the well-known and distinctive character and reputation of the GEICO Mark the Respondent must have been aware of the Complainant and its GEICO Mark when registering the Disputed Domain Name. Secondly, the Respondent’s use of the GEICO Mark to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so is further evidence of bad faith following SANOFI-AVENTIS v. Andris Maupalis, WIPO Case No. D2007-1341. Thirdly, the Respondent is deemed to have constructive notice of the Complainant’s trademark rights by reason of the federal registrations of the trademarks in that a basic domain search and other searches of the USPTO records would have revealed the Complainant’s rights in the GEICO Mark. See ERREA’SPORT S.p.A v. Protected Protected, Shield WhoIs, WIPO Case No. D2018-2471. Fourthly, the fact that the Disputed Domain Name resolves to a website that lists the Disputed Domain Name for sale suggests that the sole purpose for the Respondent to have registered the Disputed Domain Name was for its resale.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall draw such adverse inferences from the failure of the Respondent to reply, as it considers appropriate.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) the Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant;

ii) the Complainant has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) the Disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel finds and accepts that the Complainant is a well-known insurance services provider and owns a considerable number of trademark registrations of the GEICO Mark in the United States. The Complainant is also the owner of the website located at “www.geico.com” through which it promotes and sells its insurance services. In the circumstances, the Panel finds that on a visual examination of the Disputed Domain Name <geicoinsurance.online>, the Disputed Domain Name is clearly confusingly similar to the Complainant’s GEICO Mark. The Disputed Domain Name consists entirely of the GEICO Mark. The Panel further accepts that the mere addition of the descriptive term “insurance” and the general Top-Level Domain “online” does absolutely nothing to prevent a confusing similarity finding when conducting a confusing similarity test. See in this regard a previous UDRP decision in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903 where the Panel held as follows: “When a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.” Furthermore, the Panel relies on the detailed discussion on the test for confusing similarity as can be found at sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0). See also previous UDRP decisions in Government Employees Insurance Company v. Salman Sarwar, supra finding the disputed domain name <egeicoinsurance.com> to be confusingly similar to the GEICO Mark and L’Oréal, Lancôme Parfums Et Béaute & Cie v. Jack Yang, supra where the panel found and transferred about twenty-three disputed domain names to the complainantonthe basis of those disputed domain names being confusingly similar to the complainant’s trademark in L’Oreal.

6.4 In the circumstances, the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 With regards to rights and legitimate interests, within the ambit of paragraph 4(c) of the Policy, the Panel also finds that the Respondent has failed to provide any evidence of bona fide offering of goods or services nor a legitimate fair use of the Disputed Domain Name. In particular, the Respondent has not provided any evidence of a connection or affiliation or consent, express or implied to register the Disputed Domain Name. On the contrary, what the evidence advanced by the Complainant establishes is that the Disputed Domain Name resolves to a website that lists the Disputed Domain Name for sale with a minimum bid demand for USD 3168.00. The Panel finds that such conduct by the Respondent, cannot by any means be described as legitimate noncommercial or fair use activity within the ambit of the Policy. In addition, just as the Complainant asserts, the GEICO Mark is a famous mark and it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, see in this regard the often-cited decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

6.7 On the question of bad faith registration and use, the Panel has taken into account a number of undisputed factors to conclude that the Respondent undoubtedly registered the Disputed Domain Name in bad faith with the expressed intention of exploiting the reputation of the Complainant’s trademarks and profile in the insurance industry for illicit financial gain.

6.8. First of all, the Panel finds that it is inconceivable that the Respondent was not aware of the Complainant’s extensive activity in the insurance industry and the distinctive character of the GEICO Mark at the time of registering the Disputed Domain Name on October 5, 2020. As the Complainant correctly asserts, a basic domain name search and or a trademark search would have revealed the Complainant’s extensive rights in the GEICO Mark. Accordingly, the Panel finds that the registration of the Disputed Domain Name by the Respondent was in bad faith as the Respondent was fixed with both actual and constructive notice of the Complainant’s rights. See in this regard ERREA SPORT S.p.A. v. Protected Protected, Shield WhoIs, supra, a previous UDRP decision holding that the registration of the disputed domain name was in bad faith since respondent is presumed to have constructive notice of registered trademarks. Secondly, the Respondent’s deliberate use of the Complainant’s GEICO Mark to attract Internet users to the Respondent’s website without the Complainant’s authority or consent is further evidence of bad faith use following the decision in SANOFI-AVENTIS v. Andris Maupalis, supra. Thirdly, the fact that the Disputed Domain Name resolves to a website that lists the Disputed Domain Name for sale is further evidence of bad faith use and an intention to exploit the Disputed Domain Name for illicit financial gain. See Carige Vita Nuova S.p.A v. Vita Nuova. Public Organisation, Domain Management/WhoIs Privacy Services by Domain Protect LLC, WIPO Case No. D2010-1912 holding that the advertisement of disputed domain name for sale is indicative of bad faith registration and use of the disputed domain name. Fourthly, the Panel finds that the Respondent’s use of a privacy protection shield in the past if considered together with all the undisputed issues above goes further to establish the Respondent’s bad faith registration and use of the Disputed Domain Name. Fifthly, as indicated in paragraph 5.4 above the Panel has further drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant as are advanced in this proceeding.

6.9 Accordingly, the Panel is satisfied that the Respondent registered the Disputed Domain Name in bad faith and continued to engage in bad faith use.

7. Decision

7.1 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 <geicoinsurance.online> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: December 18, 2020

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