The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States” or “U.S”), represented by Burns & Levinson LLP, United States. .
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <sgeico.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2020. On April 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2020, 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 April 29, 2020, 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 May 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020.
The Center appointed Chris Pibus as the sole panelist in this matter on June 10, 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 has provided insurance services under the name GEICO since 1936. It offers a full range of insurance services, including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. For over 80 years the Complainant has owned and used the trademark GEICO in association with insurance services. The Complainant owns several U.S. Trademark Registrations for GEICO and GEICO-formative marks as listed below:
U.S. Trademark Registration No. 763,274 for GEICO registered on January 14, 1964;
U.S. Trademark Registration No. 2,601,179 for GEICO registered on July 30, 2002;
U.S. Trademark Registration No. 1,442,076 for GEICO DIRECT registered on June 9, 1987;
U.S. Trademark Registration No. 2,071,336 for GEICO DIRECT registered on June 17, 1997;
U.S. Trademark Registration No. 2,982,260 for GEICO AUTO REPAIR XPRESS registered on August 2, 2005;
U.S. Trademark Registration No. 3,262,263 for GEICO MOTORCYLE registered on July 10, 2007.
The Complainant has extensively used the GEICO trademark in association with over 17 million insurance policies insuring more than 28 million vehicles. The Complainant has over 40,000 employees.
The Complainant operates a website at “www.geico.com” which promotes and sells its motor vehicle insurance services. The website enables internet customers to access information regarding the Complainant’s insurance services, manage their policies and claims, learn more about the Complainant and obtain insurance quotes.
The disputed domain name <sgeico.com> was registered on February 21, 2020 and redirects to various third party websites.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademark GEICO. The disputed domain name <sgeico.com> incorporates the Complainant’s trademark in its entirety. The only difference is the addition of the letter “s”, which does not prevent a finding of confusing similarity.
The Complainant is not connected or affiliated with the Respondent in any manner. The Respondent is not licensed or authorized to use the Complainant’s registered trademark. The Respondent is not using the confusingly similar disputed domain name <sgeico.com> in association with a bona fide offering of goods and services. The disputed domain name resolves, via redirection, to a number of rotating third party websites of which some of those third party sites contain malicious malware threats. The Respondent also offers for sale the disputed domain name for USD 899 which is in excess of the Respondent’s expenses to register the disputed domain name. In all these circumstances the Complainant submits that the Respondent does not have any rights and/or legitimate interests.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered a confusingly similar domain name, which contains the Complainant’s well-known trademark in its entirety. The disputed domain name resolves, via redirection, to a number of rotating third party websites, of which some contain malware threats. The Respondent is offering the disputed domain name for sale in an amount, which is greater than the Respondent’s out of pocket expenses. Further, the Respondent has a history of abusive registrations, wherein third party registered trademarks have been incorporated in the domain names. For example: Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0501. Accordingly, the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the 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.
The Panel finds that the Complainant does have registered trademark rights in the trademark GEICO by virtue of the registrations listed in paragraph 4 of this Decision.
The Panel finds that the disputed domain name <sgeico.com> is confusingly similar to the Complainant’s trademark as the disputed domain name incorporates the entire GEICO trademark. The addition of the letter “s” does not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the GEICO trademarks as noted in section 4 of this Decision. The Complainant’s trademarks are well-known in the U.S., based on the voluminous sales and promotion of the Complainant’s services over many years. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was fully aware of the Complainant’s trademark. The Respondent’s use of the disputed domain name in association with a dynamic redirection to third party websites, of which some contain malicious malware is not a bona fide offering of goods and services under the Policy.
Furthermore, in the circumstances of this case, the composition of the disputed domain name, incorporating the Complainant’s trademark and the addition of the single letter “s” is intended to capture typographical errors made by unsuspecting Internet users thereby intending to trade on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.
In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
The Respondent registered the disputed domain name to divert Internet users seeking the Complainant’s website and services for purposes of monetary gain. The disputed domain name is used for dynamic redirection to third party websites, some of which contain malicious malware threats and which are therefore detrimental to the Complainant’s reputation. The Respondent has been named in other UDRP proceedings and has a history of misappropriating third party registered trademarks. The registration of the disputed domain name was clearly abusive, targeting the Complainant’s famous GEICO trademarks, which were well known long before the registration of the disputed domain name. The circumstances of this case justify a finding of registration and use in bad faith.
The Complainant has therefore satisfied the requirements 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 name <sgeico.com> be transferred to the Complainant.
Chris Pibus
Sole Panelist
Date: July 1, 2020