Complainant is Government Employees Insurance Company (“GEICO”) of Chevy Chase, Maryland, United States of America (“USA” or “United States”), represented by Burns & Levinson LLP, USA.
Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, USA.
The disputed domain name <geicoinsurance.biz> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2019, 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 Complainant on March 21, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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 Respondent of the Complaint, and the proceedings commenced on March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 16, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 29, 2019. 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 the owner of a substantial number of registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) for the word trademark and service mark GEICO, including without limitation service mark registration number 763,274, registration dated January 14, 1964, in international class 36, covering insurance underwriting and related services. Complainant is also registrant of a substantial number of GEICO-formative trademarks and service marks.
Complainant provides various types of insurance services including, among others, automobile, motorcycle, homeowners, rental and condominium. Complainant operates a commercial website at “www.geico.com”. Complainant extensively advertises and promotes its Geico insurance brand in the United States, including through broadcast television advertising.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on September 14, 2018, which is the same date as the date of initial registration record creation.
Respondent has used the disputed domain name to redirect Internet traffic to a rotating set of third-party websites that are unaffiliated with Complainant, and which third-party websites advertise and promote products and services that are unrelated to Complainant. These include websites that advertise and promote media content (with advertisements) and weight loss programs.
By email of January 4, 2019, Complainant transmitted a cease-and-desist and transfer demand to Respondent. There is no indication in the record of the proceeding that Respondent replied to this email.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in a trademark and service mark (hereinafter “trademark”) and that the disputed domain name is identical or confusingly similar to that trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has no connection or affiliation to Complainant and has not received any license or consent to use Complainant’s trademark in the disputed domain name or in any other manner; (2) Complainant’s GEICO trademark is well-known and Respondent deliberately misappropriated Complainant’s trademark in the disputed domain name; (3) use of the disputed domain name to redirect Internet users to a third-party website does not establish a legitimate interest, and; (4) Respondent did not legitimately and randomly select to use Complainant’s trademark in the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant’s trademark rights when it registered the disputed domain name with the intent to profit off Complainant’s rights; (2) Respondent at the least had constructive notice of Complainant’s trademark rights based on its registrations at the USPTO; (3) Respondent’s use of the disputed domain name to redirect Internet traffic to third-party websites without authorization is evidence of bad faith; (4) Respondent’s use of Complainant’s trademark to promote products and services of third parties is evidence of bad faith; (5) Respondent’s use of Complainant’s trademark to suggest an affiliation with Complainant to Internet users evidences bad faith; (6) Respondent’s use of a privacy protection service to conceal its identity suggests bad faith, and; (7) there is no conceivable use that Respondent could make of Complainant’s trademark that would not constitute an infringing use.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address listed in Respondent’s records of registration. Courier records indicate that delivery of the Written Notice to the address of Respondent was successfully completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of ownership of rights in the trademark GEICO including by registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights in its trademark. The Panel determines that Complainant owns rights in the trademark GEICO.
The Panel takes administrative notice that Complainant’s GEICO trademark is well known in the United States.
The disputed domain name fully incorporates Complainant’s distinctive and well-known GEICO trademark, adding the term “insurance”. Combining a well-known trademark with a common term associated with the business of the trademark owner does not avoid a finding of confusing similarity under the Policy. In the circumstances here, the full incorporation of Complainant’s distinctive and well-known trademark in the disputed domain name is sufficient to establish confusing similarity between the disputed domain name and Complainant’s trademark.1
The Panel determines that Complainant owns rights in the trademark GEICO, and that the disputed domain name is confusingly similar to that trademark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has used the disputed domain name to direct Internet users to third-party websites advertising and promoting goods and services not associated with Complainant. Such use does not establish rights or legitimate interests in favor of Respondent.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”
Respondent registered the disputed domain name confusingly similar to Complainant’s well-known trademark and is using it to divert Internet users to third-party websites offering products and services unrelated to Complainant, and without Complainant’s approval or endorsement (presumably earning advertising revenues for Respondent). Respondent has not attempted to rebut Complainant’s evidence of Respondent’s bad faith registration and use of the disputed domain name. The Panel determines that Respondent is using the disputed domain name intentionally for commercial gain to attract Internet users to Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or other online location. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 <geicoinsurance.biz> be transferred to Complainant.
Frederick M. Abbott
Date: May 10, 2019
1 The generic Top-Level Domain ".biz" in the disputed domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Stay updated! Get new cases and decisions by daily email.