WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company (“GEICO”) v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-3812
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 Registration Private, Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrar
The disputed domain names <geicobrands.com> and <geicoinsuranse.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <geicobrands.com>. On November 17, 2021, 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 the Complainant on November 17, 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 consolidated Complaint on November 19, 2021 including the disputed domain name <geicoinsuranse.com>. On November 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <geicoinsuranse.com>. On November 29, 2021, the Registrar transmitted by email to the Center its verification response confirming the details for the disputed domain names.
The Center verified that the Complaint together with the amended consolidated 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 December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on January 7, 2022.
The Center appointed Theda König Horowicz as the sole panelist in this matter on February 1, 2022. 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 insurance provider who has been providing its services throughout the United States under the trademark GEICO since at least 1948. It is a large company with over 40,000 employees and is particularly known for insuring vehicles.
The Complainant holds notably the United States Trademark Registration “GEICO” No 0763274, of January 14, 1964. It also holds other trademark registrations for GEICO internationally.
The Complainant has an official online presence through its website “www.geico.com” which provides an overview of its activities and which promotes its insurance services. The website enables users to access information regarding the Complainant’s services, manage their policies and claims, learn more about the Complainant, and obtain insurance quotes.
Additionally, the Complainant maintains various social media accounts under its GEICO trademark, which garner tens of thousands of followers.
The disputed domain name <geicobrands.com> was registered on October 19, 2021, and the disputed domain name <geicoinsuranse.com> was registered on June 18, 2021by the Respondent who has been named in several other past UDRP proceedings relating to GEICO and other brands.
The disputed domain names have been advertised as being for sale for a minimum bid of USD 899 each.
The disputed domain name <geicobrands.com> resolves to a parked pay-per-click page, which in turn links to numerous websites operated by third parties, including competitors of the Complainant.
The disputed domain name <geicoinsuranse.com> redirects to rotating third party websites including websites promoting the services of direct competitors of the Complainant.
The Complainant sent emails to the Respondent on July 2, 2021, for <geicoinsuranse.com>, and on October 21, 2021, for <geicobrands.com>, asking for the transfer of the disputed domain names. No answer was given by the Respondent to the said emails.
5. Parties’ Contentions
The Complainant invokes to have trademark rights in GEICO. The disputed domain names each incorporate the said mark and are therefore identical or confusingly similar to the GEICO mark regardless of the inclusion of the generic or descriptive terms “brands” and “insurance”.
The Complainant alleges not to have authorized the use of its GEICO trademark in any form. Furthermore, the Respondent does not offer legitimate GEICO services on the websites to which the disputed domain names resolve. The Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent’s use of the disputed domain names cannot be considered as fair because they falsely suggest an affiliation with the Complainant and because the disputed domain names redirect users to websites promoting the services of the Complainant’s competitors. Moreover, the disputed domain name <geicobrands.com> is used to host a parked page comprising pay-per-click links which is not a bona fide offering of goods or services.
The Complainant further claims that the Respondent’s incorporation of the Complainant’s worldwide famous GEICO trademark in the disputed domain names creates a presumption of bad faith. The Respondent’s offer to sell the disputed domain names for USD 899 each along with the Respondent’s apparent use of the disputed domain names to reap undeserved pay‑per‑click fees is a further indication of bad faith. The Respondent’s lack of response to the Complainant’s demand letters and continuation of its use thereafter emphasized the Respondent’s bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant showed to have trademark rights in GEICO through trademark registrations worldwide, including the United States.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and a disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain names contain the GEICO trademark in its entirety. The mere addition of the terms “brands” or “insuranse” (an apparent typo of the word “insurance”) does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain names.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “geico” or that a legitimate business has been or would be run by the Respondent under the disputed domain names.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain names have been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain names. Furthermore, the nature of the disputed domain names, incorporating the Complainant’s well-known trademark and a descriptive term associated with the Complainant’s services, carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown that its GEICO trademark has been registered and widely used for many years, particularly in the United States, before the registration of the disputed domain names in 2021.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain names (see section 3.2.2 of the WIPO Overview 3.0). This finding is reinforced given the construction of the disputed domain names, namely the addition of the affiliated terms “brand” and “insuranse” to the Complainant’s trademark, even though the term “insurance” is misspelled.
The Complainant has provided evidence that the disputed domain names have been offered for sale on third party websites, which is an indication that the disputed domain names were acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names for commercial gain likely in excess of the Respondent’s costs.
Furthermore, the Complainant has shown that one of the disputed domain names resolve to a parking page, which provide links to some of its competitors, and the other disputed domain name dynamically redirects to websites including competitors of the Complainants, which is also an indication of bad faith use.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is another indication of bad faith in the present circumstances.
Finally, the Respondent has been found to have registered many domain names unduly containing famous brands (i.e. cybersquatting) in numerous past UDRP decisions, which is a typical indication of bad faith as well.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established their case under paragraph 4(a)(iii) 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 names, <geicobrands.com > and <geicoinsuranse.com>, be transferred to the Complainant.
Theda König Horowicz
Date: February 16, 2022