WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. Ken Williams, WJS, P.C
Case No. D2021-3460
1. The Parties
Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Ken Williams, WJS, P.C, United States.
2. The Domain Name and Registrar
The disputed domain name <geicotv.media> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on October 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 21, 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 Respondent of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on November 13, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 24, 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.
On November 24, 2021, following the appointment of the Panel, the Center received an e-mail communication from Respondent.
4. Factual Background
Complainant is a major provider of insurance services in the United States. It is the proprietor of numerous registrations for its GEICO mark, including the following:
- United States Trademark Registration No. 763264 for GEICO (word mark), registered on January 14, 1964 for services in class 36;
- European Union Trade Mark No. 1178718 for GEICO (word mark), registered on October 4, 2013 for services in class 36.
The disputed domain name was registered on March 14, 2019. It currently redirects to <heroplan.org>, which hosts a website featuring information about current affairs.
The record contains e-mail correspondence between Respondent and Complainant, including Complainant’s cease-and-desist message to Respondent dated September 15, 2021.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it is an internationally well-known insurance provider that has provided its insurance services - including insurance brokerage and underwriting for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats - throughout the United States under the mark GEICO since at least 1948. Complainant has issued over 17 million insurance policies, and has over 40,000 employees, and is one of the fastest-growing automobile insurers in the United States. Complainant has established its primary business website at “www.geico.com.” The disputed domain name incorporates Complainant’s GEICO mark in its entirety, together with the descriptive term “tv.”
Under the second element, Complainant states that it has not given any authorization for the use of its GEICO trademark in any form, nor does the Respondent offer any legitimate GEICO services on the website to which the disputed domain name resolves. Under these circumstances, Respondent has no rights in, and cannot conduct any legitimate business under, the disputed domain name nor could its use of the famous GEICO trademark to redirect users to its own website featuring content entirely unrelated to Complainant support a claim to rights or legitimate interests.
Under the third element, Complainant states that Respondent’s incorporation of Complainant’s famous, widely-known GEICO mark into the disputed domain name creates a presumption of bad faith. GEICO is a famous trademark that is one of the most recognizable insurance brands in the United States and is known throughout the world. Respondent’s establishment of a website using a domain name incorporating Complainant’s famous mark to promote its own unrelated services can be for no other purpose than to catch the attention of Internet users and syphon off Complainant’s goodwill and reputation.
Complainant requests transfer of the disputed domain name.
Respondent did not submit a formal Response. However, in an e-mail to the Center (not copied to Complainant) dated November 24, 2021, Respondent stated: “Contact my attorney, we dispute your CLAIM 100%!”
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall 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.”
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the GEICO mark through registration in the United States and elsewhere. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name consists of Complainant’s mark together with the term “tv.” It is the consensus view of UDRP panels that where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, section 1.8.
It is the well-established view of UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.media” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is making a 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.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the GEICO mark with the permission of Complainant.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in not responding to Complainant’s contentions, has not submitted any evidence or arguments demonstrating rights or legitimate interests, nor has it rebutted Complainant’s prima facie case. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. There is no evidence that Respondent is known by the disputed domain name. The record reflects that the disputed domain name redirects to <heroplan.org>, which hosts a website featuring information unrelated to Complainant. The Panel finds that the evidence supports a finding that Respondent has selected the disputed domain name to attract Internet users to its website misappropriating the goodwill associated with Complainant’s mark and misleadingly diverting consumers. Such use cannot establish rights or legitimate interests.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration of the disputed domain name. Complainant’s rights in its GEICO mark predate the registration of the disputed domain names by over 50 years. The Panel concurs with previous UDRP panels that Complainant’s mark is distinctive and that the GEICO brand is recognizable. See, for example, Government Employees Insurance Company (“GEICO”) v. Jun Yin, WIPO Case No. DCO2020-0037 and Government Employees Insurance Company v. Joel Rosenzweig, RegC, WIPO Case No. D2021-1221. Complainant’s mark is clearly visible in the disputed domain name, which comprises Complainant’s mark.
Turning to use of the disputed domain name, the Panel finds that Complainant has demonstrated Respondent’s bad faith. The disputed domain name redirects to <heroplan.org>, which hosts a website featuring information unrelated to Complainant. The Panel notes that the website lacks any disclaimer notifying Internet users that the site is unrelated to Complainant. Lacking any explanation from Respondent as to why it has chosen the disputed domain name, the Panel finds it more likely than not that Respondent registered the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. In particular, the Panel notes the clear absence of Respondent’s own rights or legitimate interests in the disputed domain name and the reputation of Complainant’s mark. All these factors clearly indicate bad faith registration and use of the disputed domain name. See WIPO Overview 3.2.1 and cases cited thereunder. See also Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 <geicotv.media> be transferred to Complainant.
Date: December 8, 2021