WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Domain Admin, Whois Privacy Corp.

Case No. D2021-1401

1. The Parties

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

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <1geico.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 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 May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.

The Center appointed Adam Samuel as the sole panelist in this matter on July 29, 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 an insurer. The Complainant owns a number of US trademarks for the mark GEICO, including registration number 763274, registered on January 14, 1964. The Complainant registered the domain name <geico.com> on July 22, 1995 through which it promotes its products and services.

The disputed domain name was registered on April 12, 2021. When this Complaint was filed, it resolved to a parking page offering a variety of insurance-related services some of which compete directly with the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name consists entirely of the Complainant’s distinctive GEICO mark with the addition of the number “1” and the generic Top-Level Domain (“gTLD”) “.com” and is thus confusingly similar to the Complainant’s trademark regardless of the addition of the number “1” in the disputed domain name.

The Respondent has no connection with the Complainant and has not received any license or consent to use the Complainant’s trademarks. The Respondent has never been known by the disputed domain name. Where a mark is famous, as it is in this case, traders would not legitimately choose a disputed domain name incorporating it unless seeking to create an impression of an association with the Complainant.

Due to the well-known and distinctive character of the Complainant’s GEICO mark, the Respondent must have been aware of the Complainant and its marks when registering the disputed domain name. The Respondent had constructive notice of the Complainant’s trademark rights by virtue of their US trademark registration. The Respondent used the Complainant’s GEICO mark to attracted Internet users to the Respondent’s website knowing that the Complainant had not authorized it to do so. The fact that the disputed domain name resolves to a website containing apparent “pay-per-click” hyperlinks to third-party websites featuring services provided by the Complainant’s competitors is evidence of bad faith. The disputed domain name has been advertised for a minimum sale value of USD 899, far in excess of any out-of-pocket expenses directly related to the disputed domain name. This strongly suggests that the Respondent was aware of the Complainant’s trademark and business when the Respondent registered the disputed domain name. The Respondent’s lack of response to the Complainant’s demand letter and continuation of its bad faith use of the disputed domain name despite receiving that letter further emphasizes the Respondent’s bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent 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.

A. Identical or Confusingly Similar

The disputed domain name consists of the number “1”, the Complainant’s distinctive trademark, and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant’s trademark is a made-up one, created from the first letters of the component parts of the Complainant’s name. The addition of a number to a trademark does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.

Section 1.8 of the WIPO Overview 3.0 says:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive […] meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “1geico” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any legitimate purpose.

Based on the available record, where the Complainant has made out a preliminary case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

Both the disputed domain name and the Complainant’s trademark GEICO are words without any ordinary meaning. The addition of the number “1” in the disputed domain name does not give the disputed domain name any meaning independent of the Complainant’s trademark. This is a typical typo-squatting case. On this subject, section 3.1.4 of the WIPO Overview 3.0 says:

“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names […] incorporating the mark plus a descriptive term) to a famous or widely‑known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

In similar terms, section 3.2.1 of the WIPO Overview 3.0 indicates:

“Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: […] the nature of the domain name (e.g., […] a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term”.

From all this, the Panel concludes that the Respondent knew of the Complainant’s business when it registered the disputed domain name and, in registering the disputed domain name sought to disrupt the Respondent’s business by attracting to its own website Internet users seeking the Complainant’s website. Furthermore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.

There is also evidence that the Respondent sought to sell the disputed domain name shortly after registering it for a sum significantly in excess of the Respondent’s likely out-of-pocket costs directly related to the disputed domain name.

For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

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 <1geico.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: July 30, 2021