WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-0326
1. The Parties
The Complainant is Government Employees Insurance Company, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrars
The disputed domain names <b2bgeico.com> and <geicob2bservices.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021 in relation to the disputed domain name <b2bgeico.com>. On February 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <b2bgeico.com>. On February 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, <b2bgeico.com>, which differed from the named Respondent and contact information in the Complaint.
In view of the information revealed by the Registrar, the Complainant filed an amended Complaint on February 4, 2021 requesting to add the disputed domain name <geicob2bservices.com> to the current proceeding.
The Complainant consolidated <geicob2bservices.com> and <b2bgeico.com> in the amended Complaint.
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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on April 26, 2021. 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, Government Employees Insurance Company, is an insurance company, which provides insurance services since 1936. It has been trading under the name GEICO for nearly 80 years.
The Complainant is the owner of various registrations in the United States of America for the word mark GEICO including:
- United States Registration No. 763,274 registered on January 14, 1964 in relation to services of classes 35 and 36;
- United States registration No. 2,601,179 registered on July 30, 2002 in relation to services of class 36.
The Complainant operates a website at “www.geico.com” to promote and sell its motor vehicle insurance services.
The disputed domain names were registered respectively on January 8, 2021 for <geicob2bservices.com> and on February 1, 2021 for <b2bgeico.com>.
The disputed domain names used to resolve to webpages reproducing sponsored links, including in relation to insurance services.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its GEICO famous trademark. Indeed, the disputed domain names incorporate the trademark GEICO in its entirety, and the addition of the description terms “b2b” and “services” do not obviate confusion, as the mark GEICO remains clearly recognizable.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use the disputed domain names, and there is no indication that the Respondent is known under the disputed domain names. The Respondent has not used the disputed domain names in connection with any bona fide offering of goods or services, nor is the Respondent making any legitimate non-commercial use of the disputed domain names.
The Complainant contends finally that the disputed domain names were registered and used in bad faith as the Respondent must have been aware of the pre-existing mark of the Complainant, which is famous. Furthermore, the Complainant asserts that the Respondent used the reputation and goodwill of the Complainant and its GEICO mark through the disputed domain names to attract potential users for financial gain obtained through pay-per-click sponsored links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the mark GEICO.
The disputed domain names reproduce the Complainant’s trademark GEICO in its entirety with no alteration. The trademark is combined with the descriptive terms “b2b” (which is a commonly used abbreviation for “business to business”) and “services”.
As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark GEICO is clearly recognizable in the disputed domain names. The mere addition of the descriptive terms “b2b” and “services” does not change the overall impression produced by the disputed domain names and does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141).
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the conditions set forth in paragraph 4(a)(i) of the Policy with respect to both disputed domain names.
B. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain names, nor has the Complainant granted to the Respondent an authorization to use the disputed domain names. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain names.
Furthermore, the use of the disputed domain names to redirect to a page comprising links that appear to be pay-per-click links, does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. This can hardly be legitimate or fair use.
Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).
In view of the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent’s silence corroborates such prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith.
Given the distinctive nature and knowledge of the mark GEICO and the long use preceding registration of the disputed domain names, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its GEICO mark at the time of the registration of the disputed domain names. Consequently, the Panel finds it unlikely that the disputed domain names were chosen independently without reference to the Complainant’s trademark.
The presence of (presumably sponsored) links to third party websites on the page to which the disputed domain names resolve also supports a finding of use in bad faith. Indeed, the redirection to a webpage with sponsored links suggests, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Furthermore, the sponsored links include links to websites that offer insurance services, which compete with the Complainant. Such conduct constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
Furthermore, the disputed domain name <geicob2bservices.com> is for sale with a minimum offer of USD 899. Considering the similarity of the disputed domain name with the Complainant’s trademark, this minimum price tends to show that the Respondent registered the disputed domain name to resell it for a higher price than just the registration costs directly related to the acquisition of a domain name. According to paragraph 4(b)(i) of the Policy, circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name, constitute evidence of registration and use in bad faith.
Finally, there is a pattern of abusive registrations by the Respondent, who was involved in numerous UDRP proceedings. Such behavior amounts to registration and use of a domain name in bad faith according to paragraph 4(b)(ii) of the Policy.
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <b2bgeico.com> and <geicob2bservices.com>, be transferred to the Complainant.
Anne-Virginie La Spada
Date: May 12, 2021