The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is WDAPL, Netherlands.
The disputed domain name <giieco.com> (“Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 10, 2019, 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 December 20, 2019, 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 amended Complaint on January 6, 2020.
The Center verified that the Complaint together with the amended 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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 19, 2020. 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.
The Complainant operates an insurance business in the United States, founded in 1936, currently employing more than 40,000 people. The Complainant holds a portfolio of registrations for the trademark GEICO, and variations of it, including United States Trademark Registration No. 763,274, for example, that was registered on January 14, 1964.
The Complainant owns numerous domain names that comprise or contain the trademark GEICO, including the domain name <geico.com>.
The Respondent registered the Disputed Domain Name <giieco.com> on December 23, 2006. The Disputed Domain Name redirected to a website that provided competing services and, in a different period, malicious content.
The Complainant cites its United States trademark registrations including No. 763,274 registered in 1964, and numerous other registrations in the United States for the mark GEICO, as prima facie evidence of ownership.
The Complainant submits that the mark GEICO is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <giieco.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the GEICO trademark and that the similarity is not removed by the transposition of the letters “e” and “i”, or the additions of the letter “i” and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolved at different times to a competitor’s website and to redirect users to a website containing malicious content, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and “constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the (trademarks)”.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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 has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark GEICO in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the GEICO trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark GEICO; (b) with the letters “e” and “i” transposed; (c) an additional letter ‘i” inserted after the letter “g”; (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “giieco”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, like in this case, the misspelling of the GEICO Trademark,” i.e.: “giieco”. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Government Employees Insurance Company v. Savvy Investments, LLC Privacy ID# 836539, WIPO Case No. D2019-2406, “The Panel finds that the entirety of the GEICO Mark is included in the Disputed Domain Name. The Panel further finds that the addition of the letter “e” is not distinctive and the gTLD “.com” may be disregarded for purposes of assessing confusing similarity.”).
This Panel finds that the transposition of the letters “i” and “e” and the addition of the letter “i” after the letter “g” after the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s registered trademark (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 “The only difference between the Respondent’s domain names and the Complainant’s trademark is the purposeful misspellings of Wachovia. The domain name <wochovia.com> is purposefully misspelled by substituting the letter “o” with the letter “a”. The domain name <wachvia.com> is purposefully misspelled by removing the letter “o”. Finally, the domain name <wachovai.com> is purposefully misspelled by interchanging the letters “a” and “I”. This conduct, commonly referred to as “typosquatting” creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy”. See also the WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it was misleadingly redirecting Internet users to a competitor’s web page dominated by advertising of a competitor’s insurance products, thereby illegitimately passing off the Complainant’s goodwill and reputation for its own benefit. The Complainant has also supplied another screen capture that purports to be evidence that the Disputed Domain Name at one time resolved to the website containing “malicious content”. The Complainant also submits that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. The uncontested evidence is that there is no bona fide offering of good or services nor fair use of the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to web pages unrelated to the Complainant.
The Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark GEICO is such a distinctive trademark in the insurances field that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Government Employees Insurance Company v. Savvy Investments, LLC Privacy ID# 836539, supra (“GEICO is a well-known insurance company”); Government Employees Insurance Company (“GEICO”) v. Hildegard Gruener, WIPO Case No. D2015-1410, “the trademark GEICO is a well-known trademark in the United States in particular for insurance services and that it has a strong distinctive character”; Government Employees Insurance Company v. Jerome Crawford, WIPO Case No. D2019-0112, “the Complainant’s GEICO trademark enjoys nationwide renown in the United States”.).
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested submission that “Respondent’s use of the Disputed Domain Name to redirect visitors to a website of the Complainant’s competitor that also provides automobile insurance services is patent evidence of bad faith use.” (Citing Decathlon v. Inamullhak CM, WIPO Case No. D2019-1622).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Government Employees Insurance Company v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2018-1698; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (being confusingly similar to the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 42 years after the Complainant established registered trademark rights in the GEICO mark.
On the issue of use, the evidence is that the Disputed Domain Name redirected to a competitor’s page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s GEICO services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company, WIPO Case No. D2016-0036; Government Employees Insurance Company v. Above.com Domain Privacy / Transure Enterprise Ltd, supra; WIPO Overview 3.0, section 3.5.
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark GEICO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name <giieco.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: February 21, 2020