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 admin, Domain Privacy Guard Sociedad Anónima, Panama.
The disputed domain name, <giecio.com> (the “Domain Name”), is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2019, the Registrar transmitted by email to the Center its verification 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 August 1, 2019, 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 August 7, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 30, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 6, 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.
The Complainant is an insurance company incorporated under the laws of the state of Maryland, United States. It operates a website connected to its <geico.com> domain name.
The Complainant is the registered proprietor of several United States trade mark registrations covering its GEICO trade mark, the earliest of which is United States Registration No. 763274 registered January 14, 1964 (application filed December 6, 1962) GEICO for a wide variety of insurance services in Class 36. The registration incorporates a 1948 first use claim.
The Panel is satisfied on the evidence before it that the Complainant operates a substantial insurance business in the United States and that its GEICO trade mark is likely to be reasonably well-known in the United States in that field.
The Domain Name was registered on April 3, 2006 and is connected to a Sedo parking page featuring advertising links to various insurance service providers (including competitors of the Complainant) and indicating that the website is for sale at a price of USD 2,715.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s GEICO registered trade mark, it being an obvious example of typosquatting; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 has demonstrated that it has registered trade mark rights in the trade mark GEICO, which is an acronym for the Complainant’s corporate name, “Government Employees Insurance Company”; but is the Domain Name confusingly similar to that trade mark? The Domain Name comprises the name “giecio” and the “.com” generic Top-Level Domain (“gTLD”) identifier. For the purposes of this assessment under paragraph 4(a)(i) of the Policy the gTLD identifier may be ignored when, as here, it serves no purpose other than the technical one.
Thus the assessment is to be made comparing the Domain Name at the second level, “giecio”, with the Complainant’s trade mark, GEICO. The former differs from the latter in that the second and third letters of the trade mark are transposed in the Domain Name and an additional “i” appears in the Domain Name between the fourth and fifth letters of the trade mark. Both names commence with a “g” and both end with an “o” and both feature within them an “e”, “a” “c” and at least one “i”. Certainly there is a similarity, but is it a confusing similarity? Is this, as the Complainant contends, an obvious case of typosquatting?
The test for confusing similarity is explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Edition 3.0 (“WIPO Overview 3.0”). The first element functions primarily as a standing requirement. The test typically involves a side-by-side comparison of the domain name and the textual components of the trade mark to assess whether the mark is recognizable within the disputed domain name. Recognizability may include recognizability by technological means such as search engine algorithms. In circumstances where a panel may be uncertain as to whether the test has been satisfied, the panel may derive comfort from reviewing the content of the website to which the disputed domain name is connected to see if it is trading off the complainant’s reputation.
To the eyes of the Panel the Domain Name is not as obvious an example of typosquatting as the Complainant asserts. There are obvious similarities, but there are also differences. The Panel notes that the webpage to which the Domain Name is connected is a Sedo parking page featuring links to a variety of insurance providers. Why? After all, both the Domain Name and the Complainant’s trade mark are, on their face, meaningless names with no apparent connection to the insurance industry. The Panel concludes on the balance of probabilities and in the absence of any challenge from the Respondent that the algorithm has introduced the insurance-related links to the Respondent’s webpage, because it recognizes the Complainant’s trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
The Complainant contends that the Respondent adopted the Domain Name, knowing it to be a misspelling of the Complainant’s GEICO trade mark, knowing that search engine algorithms would be likely to recognize the Complainant’s trade mark in the Domain Name and knowing and intending that its use of the Domain Name would capitalize on the fame of the Complainant’s trade mark to the commercial benefit of the Respondent. The Complainant contends that such a use cannot constitute use in relation to a bona fide offering of goods or services and cannot give to the Respondent any rights or legitimate interests in respect of the Domain Name.
The Complainant has not licensed the Respondent to use its trade mark or any variant of that trade mark; nor does the Domain Name appear to have any association with the name of the Respondent.
The Panel finds on the evidence before it that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to provide an answer.
In the absence of an answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel notes that the Domain Name was registered over thirteen years ago, has left it until now to take action and makes no attempt to explain the delay. The issue of delay is addressed in section 4.17 of WIPO Overview 3.0. Delay is not of itself a bar to the filing of a complaint and does not necessarily adversely affect a complainant’s chances of success. “Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.” The Respondent has not participated in this proceeding and there are, of course, many reasons why the Domain Name may not have come to the attention of the Complainant until recently. The Panel does not draw any inferences from the length of the delay in this case, but observes that delays can occasionally have a material effect on the outcome of a complaint. Complainants failing to address the point do so at their peril.
As mentioned in section 4 above, the webpage to which the Domain Name is connected indicates that the Domain Name is for sale. It features a message reading: “Buy this domain – The owner of giecio.com is offering it for sale for an asking price of 2715 USD!”. The Complainant contends that this is a figure far in excess of any out-of-pocket expenses directly related to the Domain Name and an indication that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Complainant contends that this inflated price indicates that the Respondent is aware of the Complainant’s GEICO trade mark.
The Complainant also contends that the use to which the Domain Name is being put, namely to connect to a pay-per-click parking page featuring advertising links to third party traders, including competitors of the Complainant, constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant contends that Internet users will be visiting the Respondent’s webpage by mistake, deceived by the similarity of the Domain Name to the Complainant’s trade mark. They will be looking for information in relation to the Complainant’s insurance services, but on arrival at the webpage will be faced with advertising links to other service providers, links offering the potential for pay-per-click revenue, commercial gain for the Respondent.
In the absence of an explanation from the Respondent the Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith. Failure to respond does not automatically mean that a complaint succeeds, but paragraph 14(b) of the Rules provides that “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. On the evidence before it the Panel infers from the failure of the Respondent to respond to the Complainant’s contentions that the Respondent has no satisfactory answer to those contentions.
For completeness, the Panel records that the Complainant prays in aid (a) the fact that the Respondent is a privacy service and (b) the United States law on constructive notice to support its contentions under this element of the Policy. In light of its findings above, the Panel does not feel the need to address those points.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii), 4(b)(i), and 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 Domain Name, <giecio.com>, be transferred to the Complainant.
Date: September 13, 2019
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