WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Jaques Van der Tjark, PundaMax Holdings BV, Kaya Richard J. Beaujon Z/N

Case No. D2012-1489

1. The Parties

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

The Respondent is Jaques Van der Tjark, PundaMax Holdings BV, Kaya Richard J. Beaujon Z/N of Willemstad, Curacao, Netherlands Antilles, internally represented.

2. The Domain Names and Registrar

The disputed domain names <geigo.com> and <giego.com> (the “Disputed Domain Names”) are registered with URL Solutions, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2012. On July 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 23, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Response was filed with the Center on August 20, 2012. On August 23, 2012, the Complainant submitted a Supplemental Filing.

The Respondent requested a three member panel, but did not pay the required fee for a three member panel. The time for payment was extended by the Center, but payment was not received in this extended timeframe.

The Center therefore appointed John Swinson as the sole panelist in this matter on September 20, 2012. 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, incorporated under the laws of Maryland, US. Since 1936, it has provided insurance services including automobile, home, flood and overseas insurance.

The Complainant holds a number of US trade mark registrations, including the following:

- GEICO - Registration No. 763,274 in class 36 (registered January 14, 1964);

- GEICO DIRECT - Registration No. 1,442,076 in class 16 (registered June 9, 1987);

- GEICO DIRECT - Registration No. 2,071,336 in class 36 (registered June 17, 1997);

- GEICO - Registration No. 2,601,179 in class 36 (registered July 30, 2002); and

- GEICO MOTORCYCLE - Registration No. 3,262,263 in class 36 (registered July 10, 2007),

(together, the “Trade Marks”).

The Complainant uses its website (“www.geico.com”) to promote and sell its good and services.

The Respondent is in the business of online advertising. The creation dates of the Disputed Domain Names are as follows:

- <geigo.com> on June 2, 1999; and

- <giego.com> on June 8, 1999.

The websites of the Disputed Domain Names both resolve to pay-per-click websites showing sponsored links for different automobile insurers. At present, when the Panel entered the Disputed Domain Names in his browser, one diverted to “blueautoinsurance.com” and the other to “autoinsuranceplay.com”. Both sites are computer-generated pay-per-click websites that advertise car insurance, including advertisements for the Complainant’s insurance and insurance policies of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Identical or Confusingly Similar

The Complainant submits that it has made extensive use of the Trade Marks. It has been providing insurance services since 1936 and has invested substantial sums in advertising (using the Trade Marks) over this time. The Complainant contends that the Trade Marks have become uniquely associated with it and its services.

The Disputed Domain Names are confusingly similar to the Trade Marks. Slight variation, or misspelling, of a trade mark does not make a domain name distinguishable. “Typosquatting” is evidence of confusing similarity (see, e.g., EPSON Europe BV (and for and on behalf of Seiko EPSON Corporation) v. Bladimir Moyiko, WIPO Case No. D2010-0601; Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 and Reuters Limited v. Glogal Net 2000, Inc, WIPO Case No. D2000-0441). Further, the Disputed Domain Names are phonetically similar to the Trade Marks.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Names for the following reasons:

- the Respondent has no connection or affiliation with the Complainant and has not received any license, or consent, to use the Trade Marks;

- the Respondent is not commonly known by either of the Disputed Domain Names; and

- the Respondent is only using the Disputed Domain Names to provide pay-per-click links to competitors of the Complainant; and

- the Respondent’s misappropriation of the Disputed Domain Names was no accident, because they are not names that would be legitimately chosen in connection with insurance services, unless the Respondent was seeking to create an impression of association with the Complainant.

Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Names in bad faith, as it had knowledge of the Trade Marks. At the time of registration, the Respondent had constructive knowledge of the Trade Marks, by virtue of their registrations. It is inconceivable that the Respondent was not aware of the Complainant’s rights in the Trade Marks, given the Complainant’s extensive advertising.

The Respondent uses the websites at the Disputed Domain Names to trade off the Complainant’s business, by linking Internet users to the websites of the Complainant’s competitors. The Respondent must have anticipated that use of the Disputed Domain Names in this manner would cause harm to the Complainant.

B. Respondent

The Respondent’s contentions are as follows.

Identical or Confusingly Similar

The Disputed Domain Names are not confusingly similar to the Trade Marks.

The Complainant does not have any trade mark registrations or pending registrations relating to the Disputed Domain Names (i.e., for “geigo” or “giego”).

The Respondent submitted that the Disputed Domain Names are not confusingly similar to the Trade Marks for the following reasons:

- “geigo” is one of several generic derivations of “geico” (others include “gecko” and “eico”);

- both “geigo” and “giego” are a commonly used, generic terms (geographic references and/or surnames); and

- there is no evidence of public confusion.

Rights or Legitimate Interests

The Respondent has a legitimate interest in, and is making legitimate use of, the Disputed Domain Names.

Registration of a domain name with a view to “parking” it for resale or to generate pay-per-click revenues is not illegitimate per se. Here, the Respondent’s registration is legitimate under the circumstances as it “regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links … [and] the domain name in question is a ‘dictionary word’ or a generic or descriptive phrase” (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).

The Respondent made the following submissions:

- its business has no overlap with the goods and services for which the Trade Marks are registered;

- it has not tried to compete with the Complainant or interrupt the Complainant’s business; and

- it had no knowledge of the Trade Marks when it registered the Disputed Domain Names.

Registered and Used in Bad Faith

The Complainant has not established bad faith.

The Complainant has not substantiated its Complaint. Particularly, there is no evidence that the Respondent had constructive notice of the Trade Marks. In any case, constructive notice is not sufficient evidence of bad faith registration.

The Respondent did not expect that any registration or use of the generic Disputed Domain Names would cause harm to the Complainant.

6. Discussion and Findings

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

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Complainant bears the onus of proving these elements.

A. Procedural Issues

The Policy contemplates prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.

The Complainant has provided supplementary submissions which offer rebuttal arguments and clarify several issues. They do not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.

The Panel has verified that the Complainant has rights in the trade mark GEICO. See, for example, US Trade Mark Registration No. 763,274 in class 36 (registered January 14, 1964) for GEICO.

The Disputed Domain Names are confusingly similar to the GEICO trade marks, both visually and aurally. The only differences are a different letter (<geigo.com>), and a different letter combined with a reversal of letters (<giego.com>). In this Panel’s view, these are insignificant changes that fail to distinguish the Disputed Domain Names from the GEICO trade marks (see, e.g., The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C., NAF Claim No. 714952). It appears that the Respondent has engaged in “typosquatting” (deliberate misspelling of a trade mark), in order to attract Internet users to its websites (see, e.g., Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161).

The Respondent contends that both “geigo” and “giego” are commonly used, generic terms. The Panel has reviewed the evidence provided and finds that it is insufficient to support this submission.

In light of the above, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. If such prima facie case is made out, then the burden of production falls on the Respondent to demonstrate rights or legitimate interests in the Disputed Domain Names.

Based on the record, the Panel finds that the the Respondent has no rights or legitimate interests in the Disputed Domain Names for the following reasons:

- the Complainant has not consented to the Respondent’s use of the Disputed Domain Names and has no affiliation with the Respondent;

- the Respondent is not commonly known by either of the Disputed Domain Names; and

- the Disputed Domain Names resolve to websites that display sponsored links to websites offering automobile insurance services, in competition with the Complainant. The Panel finds that this use by the Respondent is not a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), or a legitimate noncommercial or fair use (paragraph 4(c)(iii) of the Policy) (see, e.g., Disney Enterprises, Inc. v. Dayanand Kamble, NAF Claim No. 918556 and TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Claim No. 132439).

The Respondent claims that the Disputed Domain Names were registered because of the common meaning of the term “geigo”, being a geographical location in Mexico and a common Jewish family name. However, the Disputed Domain Names were used by the Respondent to advertise insurance, not for the alleged common meaning of the term “geigo”.

For the above reasons, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy is particularly relevant here and provides that there is evidence of bad faith registration and use where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.

The Panel accepts the Complainant’s evidence regarding the fame of the Complainant and its Trade Marks. On balance, the Panel finds that that at the time of registration the Respondent must have been aware of the Complainant’s Trade Marks and registered the Disputed Domain Names due to the reputation of the Complainant and its Trade Marks. This is also evident in the fact that the Respondent diverts the Disputed Domain Names to websites that specifically relate to car insurance.

The Respondent engages in “typosquatting” (as discussed above) to take advantage of the substantial reputation and the undoubted goodwill in the Trade Marks to achieve commercial gain.

The pay-per-click links displayed on the websites resolving from the Disputed Domain Names divert Internet users from the Complainant’s website to competitor’s websites. The Panel finds this is a disruption to the Complainant’s business and further evidence of bad faith registration and use according to paragraph 4(b)(iii) of the Policy.

In light of the above, the Panel finds that the Disputed Domain Names were registered and are being used 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 Names <geigo.com> and <giego.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: September 25, 2012