The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP. United States.
The Respondent is Domain Privacy Service FBO Registrant, United States / E@T Execuitve, E@T Execuitve, United States.
The disputed domain name <geicocorp.net> is registered with Domain.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which is differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 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 amendment to the Complaint on June 8, 2020.
The Center verified that the Complaint together with the amendment to 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 June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2020.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 22, 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, Government Employees Insurance Company (“GEICO”), is a well-known insurance company that has provided insurance services since 1936. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. The Complainant has been trading under the trademark GEICO for nearly 80 years and owns exclusive rights in such.
The Complainant is the owner of the following trademark and service mark registrations incorporating the word “geico” with the United States Patent and Trademark Office (“USPTO”):
|
Mark |
International Class(es) |
Registration No. |
Registration Date |
|
GEICO |
35 and 36 |
763,274 |
January 14, 1964 |
|
GEICO |
36 |
2,601,179 |
July 30, 2002 |
|
GEICO AUTO REPAIR XPRESS |
36 |
2,982,260 |
August 2, 2005 |
|
GEICO MOTOCYCLE |
36 |
3,262,263 |
July 10, 2007 |
The Complainant’s extensive use of its distinctive GEICO mark in connection with its services and large investments through TV, print media, and the Internet to promote and develop the GEICO mark result in the Complainant’s powerful goodwill and excellent reputation worldwide. The Complainant also owns the domain name <geico.com> for its business.
The disputed domain name <geicocorp.net> was registered on May 16, 2020. The disputed domain name resolves to a website containing a list of pay-per-click links that incorporate terms that are related to the Complainant’s industry and all of which then redirect Internet users to a parking page.
The Complainant sent a demand letter to the Respondent on May 21, 2020 advising of the Complainant’s rights in the GEICO mark and requested the Respondent to transfer the disputed domain name to the Complainant. As of the filing of the Complaint, the Complainant did not receive a response to the demand letter.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name <geicocorp.net> is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The Complainant argues that the Respondent incorporates the Complainant’s trademark GEICO in its entirety to form the disputed domain name, and the mere addition of the descriptive or generic term “corp” is a common abbreviation for the word “corporation” is not sufficient to prevent confusion between the disputed domain name and the Complainant’s GEICO trademark.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, from the Complainant to use the GEICO mark in the disputed domain name. The Complainant also believes that the Respondent has never been known by the disputed domain name and the Respondent’s use of the disputed domain name which resolves to a website with pay-per-click links related to the Complainant and its activities and which redirects Internet users to a parking page is further evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
3) the disputed domain name was registered and is being used in bad faith. First, the Complainant claims that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s rights in the GEICO mark and with an intent to profit off of those rights because the Complainant is a worldwide, well-known insurance company. Further, the Complainant claims that given the distinctiveness and reputation of its GEICO trademark and given the Respondent’s use the Complainant’s GEICO mark in its entirety in the disputed domain name, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s company and its trademarks.
Second, the Complainant claims that the Respondent has used the disputed domain name in bad faith because (i) the website which the disputed domain name resolves to is a website that includes pay-per-click commercial links which relate to the Complainant’s business activities in order to attract, for commercial gain, Internet users to the Respondent’s website and also redirects Internet users to a parking page; (ii) the Respondent did not respond to the Complainant’s demand letter and continued its bad faith use of the disputed domain name which further evidences the Respondent’s bad faith registration and use of the disputed domain name.
The Respondent did not submit any response to the Complainant’s contentions.
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the GEICO trademark, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere addition of the descriptive term “corp” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the addition of the generic Top-Level Domain (“gTLD”) extension “.net” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark. The Respondent registered the disputed domain name that is confusingly similar to the Complainant’s trademark, GEICO, with the knowledge of the Complainant’s world-wide famous business and its trademark.
The Panel finds the Respondent intentionally registered the disputed domain name - which is confusingly similar to the Complainant’s GEIOC trademark - in bad faith. First, the Complainant’s commencement of its business in 1936, its use of the domain name <geico.com> for the Complainant’s official website, and its registration of the GEICO trademark since at least 1964 all far pre-date the registration date of the disputed domain name by the Respondent. Second, the website which the disputed domain name resolves to contains commercial pay-per-click links related to the Complainant’s business, and all of which redirect Internet users to a parking page.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks when it registered the disputed domain name, and is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <geicocorp.net> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: August 5, 2020