About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. Lin Yanxiao

Case No. D2021-1033

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 Lin Yanxiao, China.

2. The Domain Name and Registrar

The disputed domain name <geicocommercialinsurance.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 name. On April 7, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2021.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 20, 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 a well-known insurance company incorporated under the laws of the State of Maryland, United States, and headquartered in Washington, DC, United States. The Complainant operates since 1936 in the United States, providing different kinds of insurance services, such as automobile, homeowners, rental, condominium, overseas and several other types.

The Complainant has officially been trading under the trademark GEICO for over 80 years and owns exclusive rights over this sign. GEICO is the acronym for the Complainant’s name, Government Employees Insurance Company (“GEICO”).

The Complainant renders insurance and related services under the mark GEICO. The Complainant promotes and advertises the GEICO Mark through television, print media, and the Internet for several years. As a result of such efforts, the GEICO mark is a recognizable symbol of Complainant’s goodwill and reputation.

The Complainant owns several registrations and applications for the GEICO trademark, covering a wide range of services, including but not limited to property and casualty insurance, life insurance and savings, and, asset management. These registrations include, for example, the United States registration no. 763,274 from January 14, 1964, as well as no. 2,601,179, registered on July 30, 2002. Proofs of these registrations were duly produced in the Complaint as Annex C. A copy of the Complainant’s official page, located under the domain name <geico.com>, appears in Annex D.

Prior to filing the Complaint, the disputed domain name dynamically redirected to various third-party websites, including to a page that provides links to several different websites related to insurance offerings.

The disputed domain name was registered on March 6, 2021.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark, registered and used worldwide. In fact, the disputed domain name fully incorporates the Complainant’s registered mark GEICO.

The expression chosen by the Respondent to compose the disputed domain name together with GEICO is “commercial insurance”, which is directly related to the Complainant’s main activities. The descriptive terms do not negate the confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant owns several registrations for the trademark GEICO, as well as domain names bearing this mark, as evidence by Annex C to the Complaint.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with a descriptive expression – shows a clear intention of misleading Internet users, as it links to various third-party websites, including to a page that provides links to several different websites related to insurance offerings. The Complainant underlines that the disputed domain name gives the impression that it is associated with the Complainant.

The Complainant also indicates that the Respondent registered and is using the disputed domain name in bad faith, noting the composition of the disputed domain name as well as the current use, including dynamic redirection to a page with pay-per-click links.

The Complainant tried to contact the Respondent by a cease and desist letter (Annex F to the Complaint), but no response was received from the Respondent.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i. the disputed 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 to the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark GEICO, registered in the United States. In addition, the Complainant has been providing a full range of insurance and related services for decades and under the GEICO mark.

Further, the Panel finds that disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of descriptive terms “commercial insurance”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, it is well established that “.com”, as a generic Top-Level Domain, may be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s mark (section 1.11.1 of the WIPO Overview 3.0).

Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark GEICO is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify the services rendered by the Complainant for more than 80 years.

Further, the Complainant provided evidence of the renown of the mark GEICO and the full range of insurance and financial services rendered under this mark to its clients. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark GEICO, and its direct relation to the Complainant.

In fact, the Complainant presented evidence that the disputed domain name has been used to link various third-party websites, including to a page that provides links to several different websites related to insurance offerings.

The Complainant has not authorized the Respondent to use its mark GEICO, or register a domain name incorporating the mark. There is no evidence that the Respondent is commonly known by the disputed domain name or has made a bona fide or noncommercial fair use of the disputed domain name.

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel believes that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the terms “commercial insurance”. Further, the additional terms can surely be considered an allusion to the Complainant’s core business, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be intended for illegitimate purposes.

Furthermore, the use of the disputed domain name to dynamically redirect Internet users to third party websites, including to a page with pay-per-click links related to insurance offerings, supports a finding of bad faith in these circumstances.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when registering the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved the third element 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 name, <geicocommercialinsurance.com>, be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: June 3, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/