The Complainant is Government Employees Insurance Company of Washington, DC, United States of America, (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, New Providence, Bahamas.
The disputed domain name <gekio.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 9, 2018. 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 is an insurance company of nearly 80 years standing that offers coverage in various fields, including vehicle insurance. The scale of the Complainant is that is has over 16 million policies and over 40,000 employees.
The Complainant is the registrant of a number of trademarks for GEICO alone or in combination of which the following are sufficiently representative for the purposes of this proceeding:
GEICO, registered at United States Patent and Trademark Office (USPTO), registered January 14, 1964, registration number 763274, for insurance etc.;
GEICO, registered at USPTO, registered July 30, 2002, registration number 2601179, in class 36;
GEICO DIRECT, registered at USPTO, registered June 9, 1987, registration number 1442076, in class 16;
GEICO AUTO REPAIR XPRESS, registered at USPTO, registered August 2, 2005, registration number 2982260, in class 36.
The Complainant also owns and does business through a website located at “www.geico.com”.
The Respondent is a privacy service. Nothing is known about any underlying registrant. The disputed domain name was registered on April 27, 2004, and currently redirects to third-party websites.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark GEICO, of which it is a common or obvious misspelling. The disputed domain name has substituted a “k” for “c” and reversed its position with the letter “i”, and is visually so close to the Complainant's trademark that confusion of consumers looking for the Complainant’s products and services is inevitable.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection with the Complainant and has not been permitted to use the Complainant’s trademark in any way. The Complainant believes that the Respondent has never been known by the disputed domain name. Because the Complainant’s trademark is famous, the disputed domain name is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant advertises extensively and it is inconceivable that the Respondent was unaware of the Complainant’s trademark rights at the time of registration of the disputed domain name. Searches of the Internet or the USPTO would have revealed the Complainant and its trademark. The Respondent’s use of the disputed domain name is to redirect Internet users to third party websites, including those in fields similar to and competitive with the Complainant’s business.
The Complainant has cited certain previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complaint has cited a privacy service as the Respondent. The Center requested the Registrar to confirm the identity of the registrant. In reply the Registrar named the privacy service as the registrant and did not disclose any other underlying registrant. Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. Accordingly, the Panel accepts the privacy service to be the Respondent.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
This Complaint was decided independently but contemporaneously with those of <giecko.com> (Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2018-2312), and <geico-login.com> (Government Employees Insurance Company v. Panji Sofyan, WIPO Case No. D2018-2315). Consolidation would not have been possible as the respective Respondents were different (Rules, paragraph 3(c). The Complaints were largely identical, except as to detail, as are the Decisions.
The Complainant has produced satisfactory evidence of its ownership of the trademark GEICO, alone or in combination.
The origin of GEICO is evidently the initial letters of the Complainant’s name “Government Employees Insurance Company”, presumably expressed as “g-e-i-co”. The Complainant’s trademark is therefore not a word or phrase but an acronym and an invented term distinctively associated with the goods and services of the Complainant.
The Complainant’s trademark has no dictionary or other known meaning or recognised pronunciation and no evidence has been offered as to whether it is conventionally pronounced as a word, and if so, with a hard or soft “g”, or other intonations. A screen capture of the homepage of the Complainant’s own website, “www.geico.com”, incorporates a fanciful representation of a green lizard popularly known as a gecko. On that basis, although the Complainant has not directly said so, one may surmise that the Complainant wishes people to interpret its acronym in a way reminiscent of “gecko”, or perhaps “geecko”.
The Complainant has expressed the transformation of “geico” into “gekio” as the replacement of “c” with “k”, and the transposition of “k” and “i”. The determination of confusing similarity may extend beyond the literal to include a phonetic comparison where appropriate. Since “geico” does not have a defined pronunciation, and “gekio” does not appear to have a defined meaning, there would appear to be scope for the two to be confused.
The bar under paragraph 4(a)(i) of the Policy is not conventionally set high, and in this case the Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark to be proven.
The Complainant has asserted prima facie that the Respondent has no connection or affiliation with the Complainant and has not received any form of consent to use the Complainant’s trademark. The Respondent has not been known by the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Whilst it is for the Complainant to prove its case, the Respondent has not contested the Complainant’s prima facie assertions and there does not appear to be anything in the evidence to suggest that the Respondent could satisfy any of the conditions of paragraph 4(c) of the Policy. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
With reference to paragraph 4(b)(iv) of the Policy, the Complainant has produced evidence in the form of screen captures showing two websites to which the disputed domain name was redirected at that time and for that searcher. One website displayed a seven page advertisement for a new model of Volvo car. The other screen capture showed the first page of an advertisement headed Discount Car Insurance Rates, asking for year, make and model of vehicle, with a “next” button that plausibly led ultimately towards the provision of a quotation. This would inevitably be in competition with a major part of the Complainant’s business, which is vehicle insurance.
The reasonable interpretation of the Respondent’s activity in redirecting Internet visitors from the disputed domain name to the websites of advertisers is to collect a share of the advertising revenue in return for the referral. Many websites earn revenue legitimately by referrals, usually through pay-per-click links, in order to defray operating costs or as a stand-alone business. The activity is not legitimate, however, if the domain name intended to attract Internet visitors initially is found to be intentionally confusingly similar to the trademark of another business, as in the present case. On the available evidence, and on the balance of probabilities, the Panel finds the disputed domain name to have been used in bad faith under paragraph 4(b)(iv) of the Policy. In the absence of any evidence that the disputed domain name has ever been used for any legitimate purpose, the Panel finds it to have been registered and used in bad faith in the terms 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 <gekio.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: November 22, 2018