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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-1030

1. The Parties

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

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names <geicocustomerservice.com> and <r8techfaxgeico.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and another domain name. On April 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 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 amended Complaint on April 26, 2021 requesting to remove one domain name from the Complaint and proceed only with the disputed domain names.

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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on June 10, 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 is the registered owner of several trademarks consisting and/or containing GEICO, e.g. US Trademark Registration No. 0,763,274 registered on January 14, 1964 for services in classes 35 and 36. This mark has been duly renewed and is in force.

It results from the information disclosed by the Registrar that the disputed domain name <geicocustomerservice.com> was registered on March 25, 2021 and the disputed domain name <r8techfaxgeico.com> was registered on March 26, 2021.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain names resolve to websites comprising pay-per-click links, some of which are clearly related to the insurance sector in which the Complainant operates, and some directly references the Complainant and its business and some references websites of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that the Complainant is an insurance provider incorporated under the laws of the state of Maryland, USA, and that it has provided insurance services since 1936, including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. It has been trading under the trademark GEICO for nearly 80 years. The Complainant further contends that it has over 17 million policies, insures more than 28 million vehicles and also has over 40,000 employees and is one of the fastest-growing auto insurers in the US.

In addition, the Complainant operates the domain name <geico.com> in order to promote its products and services.

The Complainant contends that its trademark GEICO is distinctive and has an excellent reputation.

The Complainant further contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark GEICO, since they incorporate the distinctive GEICO trademark regardless of the additional terms in the disputed domain names. The GEICO trademark is recognizable within the disputed domain names such that none of the additional terms “customer service”, “r8”, “tech” and/or “fax” prevent a finding of confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, 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 trademark in a domain name or in any other manner. Furthermore, it believes that the Respondent has never been known by the disputed domain names. In fact, the Respondent’s misappropriation of the GEICO trademarks in the disputed domain names was no accident, since such trademark is famous and the use of the disputed domain names to redirect to third-party websites through apparent pay-per-click hyperlinks is not a legitimate interest.

Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant’s undisputed allegations, due to the well-known and distinctive character and reputation of the GEICO trademark, the Respondent must have been aware of the Complainant and its GEICO trademark when registering the disputed domain names. Additionally, the fact that disputed domain names resolve to websites containing apparent pay-per-click hyperlinks to third-party websites featuring services provided by the Complainant’s competitors is also patent evidence of bad faith. Lastly, the Respondent actively took steps to conceal its identity by using a privacy proxy service. Such action supports a finding of bad faith registration and use of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain names be transferred or cancelled:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark GEICO. Reference is made in particular to US Trademark Registration No. 0,763,274 registered on January 14, 1964 for services in classes 35 and 36. This mark has been duly renewed and is in force.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / William Douglas, WIPO Case No. D2021-0774; Compagnie Générale des Etablissements Michelin v. Milen Radumilo, WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark GEICO is fully included in both disputed domain names, followed by the terms “customerservice” in the disputed domain name <geicocustomerservice.com> and preceded by the terms “r8” “tech” “fax” in the disputed domain name <r8techfaxgeico.com> respectively. Furthermore, it is the view of this Panel that the addition of such terms in the disputed domain names cannot prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in both disputed domain names (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8).

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain names may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark GEICO or the registration of the disputed domain names.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy.

In addition, it results from the undisputed evidence before the Panel that the disputed domain names resolve to parking websites comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark. UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent 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 (see WIPO Overview 3.0 at section 2.9, with further references). This Panel shares this view and notes that the Complainant’s trademark GEICO has gained a reputation. Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain names’ registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain names, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that these circumstances are met in the case at hand. The Complainant’s trademarks have existed for decades and have gained a reputation. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain names consisted of the Complainant’s GEICO trademarks when he registered the disputed domain names. Registration of the disputed domain names in awareness of the reputed GEICO mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, supra; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).

The Complainant also proved that the disputed domain names resolve to parking websites comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark, so that the Panel is satisfied that the disputed domain names, incorporating in its entirety the Complainant’s trademark that has gained a reputation, are being used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or locations, or of a product or service on the Respondent’s websites or locations.

Finally, the further circumstances surrounding the disputed domain names’ registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith. In that regard, the Respondent originally used a privacy service to conceal its identity and the Respondent did not provide any response with a conceivable explanation of its behavior.

In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <geicocustomerservice.com> and <r8techfaxgeico.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: June 23, 2021

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