WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. DOMAIN ADMIN Whois protection / “Hulmiho Ukolen, Poste restante”
Case No. D2021-0476
1. The Parties
The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is DOMAIN ADMIN, Whois protection, Czech Republic / Hulmiho Ukolen, Poste restante, Finland.
2. The Domain Name and Registrar
The disputed domain name <optoutgeico.com> (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2021, 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 February 19, 2021 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 April 22, 2021.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2021.
The Center appointed Willem J.H. Leppink as the sole panelist in this matter on April 1, 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 following facts are undisputed.
The Complainant, Government Employees Insurance Company (abbreviated to “GEICO”), is an insurance provider, well-known in the United States. The Complainant has been providing insurance services since 1936, employs over 40,000 employees and insures more than 28 million vehicles.
The Complainant is the owner of several registered trademarks for the word mark GEICO, including:
- United States trademark (word mark) GEICO, with registration number 763274, registered on January 14, 1964;
- United States trademark (word mark) GEICO, with registration number 2601179, registered on July 30, 2002.
These trademarks will hereinafter be referred to, in singular, as the “Trademark”.
The Complaint is the owner of various domain names that incorporate the Trademark, including <geico.com>, registered in 1995.
The Domain Name was registered on April 30, 2010. The Domain Name resolves to rotating websites of third-parties offering anti-virus and IT security solutions.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademark. The dominant part of the Domain Name reproduces the Trademark. In addition, the descriptive term “opt out” is added, which is commonly used to reference an individual’s privacy right to opt-out from processing personal data. This descriptive term cannot distinguish the Domain Name from the Trademark. Moreover, the generic Top-Level Domain (“gTLD”) “.com” need not to be taken into consideration.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent deliberately chose a domain name consisting of the Trademark. Redirecting to rotating third-party websites cannot constitute legitimate interest.
The Domain Name was registered and is being used in bad faith. The Complainant must have been aware of the Trademark. The Respondent is misleading Internet users to its website, for commercial gain, only by profiting off the Complainant’s mark and its reputation. The Respondent is offering the Domain Name for sale far in excess of out-of-pocket expenses, i.e. for USD 7,750. The Respondent is using a false address and phone number. The Respondent has engaged in a pattern of such conduct and has been engaged in over 40 previous UDRP disputes containing well-known trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in GEICO for the purposes of the Policy.
As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “geico” and “optout”. The element “geico” is identical to the Trademark. The element “optout” is a solely descriptive term. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the element “optout” does not prevent a finding of confusing similarity.
In addition, with regard to the gTLD “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is a necessary component of a domain name and does not give any distinctiveness.
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “geico” or “optoutgeico” is the Respondent’s name or that the Respondent is commonly known as “geico” or “optoutgeico”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
The Panel notes that the Domain Name resolves to rotating websites of third-parties. For the purpose of the Policy, such use of the Domain Name cannot be considered a bona fide offering of goods and services. The Respondent has also not made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, but is rather offering the Domain Name for sale.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name.
The Panel finds that the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).
Moreover, the Panel notes that the Respondent provided a false address and phone number in the registration information, i.e. zip code “12345” and phone number “+1.234567890”. Use of false registration information supports a finding of bad faith, see e.g. American City Business Journals, Inc. v. Whois Protection, this company does not own this domain name s.r.o / Hulmiho Ukolen, Poste Restante, WIPO Case No. D2018-0186.
In addition, the Panel finds that the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name, as the Complainant has sufficiently provided evidence that the Respondent has been engaged in more UDRP cases regarding domain names which contain, aside from the Complainant’s Trademark, other famous or well-known third party marks, see WIPO Overview 3.0, section 3.1.2. In the Panel’s view, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademarks and prevent the Complainant from reflecting its Trademark in a corresponding domain name.
Finally, the Panel notes that the Respondent is offering for sale the Domain Name for USD 7,750. In the opinion of the Panel, this suggests that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. This is evidence of registration in bad faith under Policy, paragraph 4(b)(i). Moreover, offering a domain name for sale in such a manner is in itself evidence of use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, finding that “[b]ecause respondent offered to sell the domain name to complainant ʻfor valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ʻusedʼ the domain name in bad faith as defined in the Policy.”
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <optoutgeico.com> be transferred to the Complainant.
Willem J.H. Leppink
Date: April 15, 2021