The Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.
The disputed domain name <geicogreenroom.co> (the “Domain Name”) is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2021 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 February 24, 2021.
The Center verified that the Complaint and 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 12, 2021. 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 following facts are undisputed.
The Complainant, Government Employees Insurance Company, abbreviated to “GEICO”, is an insurance provider, well known in the United States. The Complainant has been providing insurance services since 1936, employs over 40,000 employees and insures more than 28 million vehicles.
The Complainant is the owner of several registered trademarks for the word mark GEICO, including:
- United States trademark (word mark) GEICO, with registration number 763274, registered on January 14, 1964;
- United States trademark (word mark) GEICO, with registration number 2601179, registered on July 30, 2002.
These trademarks will hereinafter be referred to, in singular, as the “Trademark”.
The Complainant is the owner of various domain names that incorporate the Trademark, including <geico.com>, registered in 1995.
In addition, the Complainant uses the website “www.geicogreenroom.com” as part of a marketing promotion to connect fans to country artists.
The Domain Name was registered on February 7, 2021. At the time of filing of the Complaint, the Domain Name resolved to a website containing a list of pay-per-click links to third-party websites, including to websites of the Complainant’s competitors.
Insofar as relevant, the Complainant contends the following.
The Domain Name incorporates the Trademark and is therefore identical or confusingly similar to the Trademark, regardless of the additional terms in the Domain Name. The additional terms “green” and “room” do not distinguish the Domain Name from the Trademark. Moreover, the Top-Level Domain (“TLD”) “.co” need not to be taken into consideration. The use of the confusingly similar Domain Name intercepts and confuses consumers when looking for bona fide and well-known GEICO products and services or authorized partners.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Respondent deliberately chose a domain name consisting of the Trademark. Redirecting to third-party websites cannot constitute legitimate interests.
The Domain Name was registered and is being used in bad faith. The Complainant must have been aware of the Trademark. The Respondent is misleading Internet users to its website, for commercial gain, only by profiting off the Complainant’s mark and its reputation. The Respondent is offering the Domain Name for sale far in excess of out-of-pocket expenses, i.e. for $ 925. The Respondent is using privacy protection services to conceal its identity which suggests bad faith. The Respondent has engaged in a pattern of registering domain names that incorporate well-known trademarks and has been engaged in many UDRP disputes in which the panels all ruled against the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in GEICO for the purposes of the Policy.
As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “geico” and “greenroom”. The element “geico” is identical to the Trademark. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the element “greenroom” does not prevent a finding of confusing similarity.
In addition, with regard to the TLD “.co”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the TLD is a necessary technical component of a domain name.
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “geico” or “geicogreenroom” is the Respondent’s name or that the Respondent is commonly known as “geico” or “geicogreenroom”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
The Panel notes that the Domain Name resolves to a website containing a list of pay-per-click links to third-party websites. For the purpose of the Policy, such use of the Domain Name cannot be considered a bona fide offering of goods and services. The Respondent has also not made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, but is rather offering the Domain Name for sale.
Therefore, the Panel is satisfied that the second element of the Policy is met.
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
The Panel notes that the Trademark is, as are the activities of the Complainant, well known. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name. The Complainant uses the website “www.geicogreenroom.com” as part of a marketing promotion to connect fans to country artists and the Domain Name only differs as to the TLD, which only differ by one letter.
The Panel finds that the Respondent has thus 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 its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
In addition, the Panel finds that the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name, as the Complainant has sufficiently provided evidence that the Respondent has been engaged in more UDRP cases regarding domain names which contain, aside from the Complainant’s Trademark, other well-known third-party marks, see WIPO Overview 3.0, section 3.1.2. In the Panel’s view, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark and prevent the Complainant from reflecting its Trademark in a corresponding domain name.
Finally, the Panel notes that the Respondent is offering for sale the Domain Name.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is 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 Domain Name <geicogreenroom.co> be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: April 26, 2021