Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain names <geicod.com>, <geicok.com>, <geico0.com> and <ygeico.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2020.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 11, 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.
Complainant is an American company providing insurance services since 1936. Complainant’s insurance services include automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurances. According to the Complaint, Complainant has issued over 17 million policies, is the insurer of more than 28 million vehicles and has over 40,000 employees.
Complainant owns, inter alia, the following trademark registrations in the United States:
- GEICO, Registration No. 763274, registered on January 14, 1964, filed on December 6, 1962, covering various insurance services in classes 35 and 36. First use in commerce: 1948.
- GEICO, Registration No. 2601179, registered on July 30, 2002, filed on January 25, 2001, covering providing various insurance brokerage and underwriting services in Class 36. First use in commerce: December 31, 1948.
Complainant also owns the domain name <geico.com>, at which it operates the “www.geico.com” website to promote and sell its services.
The disputed domain names <ygeico.com>, <geico0.com> and <geicok.com> were registered on May 31, 2019. The disputed domain name <geicod.com> was registered on December 12, 2019.
At the time of rendering this decision, the disputed domain names resolved to various websites, as follows: the disputed domain name <ygeico.com> resolved to the “www.nordfx.com” website, offering Forex trading services. The disputed domain names <geico0.com>, <geicok.com> and <geicod.com> resolved to websites displaying the related links “Geico Auto Insurance”, “Automobile Insurance”, “Online Loans”, “Cheap Flights”, “Sport Bets”, “Avianca”, “IPhone”, “Facebook” and “Translator”.
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to Complainant’s GEICO mark as they fully incorporate common or obvious misspellings of the GEICO mark. Furthermore, (i) GEICO is a distinctive and invented word; (ii) each of the disputed domain names merely adds an additional letter or number to the GEICO mark, none of which creates any new word, or gives any of the disputed domain names a distinctive meaning; (iii) the disputed domain names are deliberate misspellings of Complainant’s GEICO mark (“typosquatting”); and (iv) the disputed domain names visually are so close to Complainant’s GEICO mark that confusion is inevitable.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the GEICO mark in a domain name or in any other manner. Furthermore, Complainant believes Respondent has never been known by any of the disputed domain names. Respondent’s misappropriation of the GEICO mark in the disputed domain names was no accident. Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant. See Telstra Corp. Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). The use of the disputed domain names to redirect to third party websites is not a legitimate interest. The GEICO mark is not a name that Respondent would have legitimately and randomly chosen to use.
Respondent registered the disputed domain names in bad faith, with knowledge of Complainant’s rights in its GEICO mark and with an intent to profit off of those rights. It is inconceivable that Respondent was unaware of GEICO’s rights in the GEICO mark when it registered, not one, but all of the disputed domain names that incorporate either Complainant’s famous federally registered GEICO mark in its entirety, or obvious misspellings thereof. At a minimum, Respondent had actual notice of Complainant’s rights. GEICO engages in extensive advertising, including television advertising, featuring its name and mark and has offices throughout the world. A simple Internet search would have revealed Complainant’s extensive use of the GEICO mark as a source identifier. Complainant’s rights in the GEICO mark also would have been obvious through basic domain name searches and other searches of the United States Patent and Trademark Office (“USPTO”) records, readily accessible online. Respondent is thus deemed to have constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the GEICO mark.
Most of the disputed domain names are advertised for sale for USD 500- USD 899, far in excess of any out-of-pocket expenses directly related to any of the disputed domain names. This fact strongly suggests that Respondent was aware of Complainant’s trademark and its business when it registered the disputed domain names and that Respondent’s intention in registering the disputed domain names was for financial gain, all in bad faith.
Respondent’s use of the GEICO mark to attract Internet users to Respondent’s websites, knowing that Complainant had not authorized it to do so is evidence of bad faith. The disputed domain names are used to redirect users to various third-party sites, including unrelated websites that feature services that are in fields related to those of Complainant, which causes harm to Complainant. Respondent’s use of the disputed domain names to redirect visitors to websites that appear to provide insurance services that are competitive with Complainant is patent evidence of bad faith use.
Finally, Respondent is a “serial cybersquatter” implicated in previous UDRP decisions for the same conduct of typosquatting, further evidencing bad faith. Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services Ltd., WIPO Case No. D2019-0879 (June 11, 2019 )(“it seems clear that over many years the Respondent has registered a series of Disputed Domain Names all confusingly similar to the Complainant’s GEICO trademark and this is part of a deliberate enterprise seeking to derive revenue as a result of traffic arriving at websites linked to the Disputed Domain Names in question”); Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2018-2527 (February 27, 2019); Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2018-2312 (November 22, 2018).
There is no conceivable contemplated use of the disputed domain names that would not be an infringing use by Respondent.
Respondent did not reply to Complainant’s contentions.
By submitting printouts taken from the USPTO database, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the GEICO trademark. See section 4 above.
The Panel notes that in each of the disputed domain names one letter or number is added to the GEICO trademark: the letter “d” as a suffix in the disputed domain name <geicod.com>, the letter “k” as a suffix in the disputed domain name <geicok.com>, the letter “y” as a prefix in the disputed domain name <ygeico.com>, and the number “0” as a suffix in the disputed domain name <geico0.com>. These minor additions are inapt to distinguish the disputed domain names from Complainant’s GEICO mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.8 (“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.”) Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark GEICO.
The Panel also notes that according to the relevant WhoIs data, the registrant of record of the disputed domain names, i.e., Respondent, is “Domain Administrator, Fundacion Privacy Services LTD”. There is no evidence that this entity is known, commonly or otherwise, by any of the disputed domain names, which excludes the application of Policy paragraph 4(c)(ii). Complainant says that it never granted Respondent any license or consent, express or implied, to use the GEICO mark in any other manner, and the Panel sees no evidence proving otherwise.
The Panel further notes that the disputed domain name <ygeico.com> resolves to the website “www.nordfx.com”, offering Forex trading services after opening an account with a broker based in Port Vila, Vanuatu. The disputed domain names <geico0.com>, <geicok.com> and <geicod.com> resolve to websites displaying related links such as “Geico Auto Insurance”, “Automobile Insurance”, “Online Loans”, “Cheap Flights”, “Sport Bets”, “Avianca”, “IPhone”, “Facebook” and “Translator”. The Panel notes that such links appear to be unrelated to Complainant. In particular, the “Geico Auto Insurance” redirects to the website of the Circle`s Group, an European insurer of events and audiovisual productions, and to the “www.viicapitalfunds.com” website of a financial company, both companies also unrelated to Complainant. In addition, the “Automobile Insurance” link redirects to competitors of Complainant. Thus, Respondent likely is profiting from the confusion with Complainant`s GEICO mark, presumably to generate click-through income. In the view of the Panel, this use of the disputed domain names is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii). In sum, Complainant has succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
Since Respondent failed to provide any arguments or reasons for having registered the disputed domain names or for using them as shown, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain names.
The Panel notes that Complainant began using its GEICO mark in 1948, and that it owns registrations for this mark in the United States since at least 1962, while the disputed domain names were registered over fifty years later, in 2019. See section 4 above. In addition, previous panels have found that Respondent had registered and used in bad faith several domain names confusingly similar to Complainant´s mark GEICO. See, inter alia, Government Employees Insurance Company v. Fundacion Privacy Services LTD, WIPO Case No. D2019-1534 and Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2018-2527.
From these facts the Panel infers that at the time of registering the disputed domain names, Respondent knew quite well and targeted Complainant and its mark GEICO. In the circumstances of this case, this is evidence of registration in bad faith.
Complainant also has shown that the disputed domain names are being offered for sale on the Internet via Sedo.com for USD 500 and USD 899, i.e., clearly above the costs directly related to their registration. According to Policy paragraph 4(b)(i) this is an additional circumstance of registration and use in bad faith.
As seen in section 6B above, Respondent is using the disputed domain names to redirect Internet users presumably looking for Complainant and its Geico insurance services either to the website of a competitor or to websites displaying “related links” totally unrelated to Complainant. In all likelihood this maneuver is addressed at generating click-through income. Thus, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or products or services on its website or location. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the disputed domain names.
The Panel concludes that the disputed domain names were registered and are being used in bad faith.
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 <geicod.com>, <geicok.com>, <geico0.com> and <ygeico.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist