WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-1723

1. The Parties

The Complainant is Government Employees Insurance Company, United States of America (“United States” or “U.S.”), represented by Burns & Levinson LLP, United States

The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The Disputed Domain Name <kgeico.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2020, 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 the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 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 amended Complaint on July 8, 2020.

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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on August 11, 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.

4. Factual Background

The Complainant has provided insurance services under the name GEICO since 1936. It offers a full range of insurance services, including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. For over 80 years the Complainant has owned and used the trademark GEICO in association with insurance services. The Complainant owns several U.S. Trademark Registrations for GEICO and GEICO-formative marks as listed below:

U.S. Trademark Registration No. 763,274 for GEICO registered on January 14, 1964;
U.S. Trademark Registration No. 2,601,179 for GEICO registered on July 30, 2002;
U.S. Trademark Registration No. 1,442,076 for GEICO DIRECT registered on June 9, 1987;
U.S. Trademark Registration No. 2,071,336 for GEICO DIRECT registered on June 17, 1997;
U.S. Trademark Registration No. 2,982,260 for GEICO AUTO REPAIR XPRESS registered on August 2, 2005;
U.S. Trademark Registration No. 3,262,263 for GEICO MOTORCYLE registered on July 10, 2007.

The Complainant has extensively used the GEICO trademark in association with over 17 million insurance policies insuring more than 28 million vehicles. The Complainant has over 40,000 employees.

The Complainant operates a website at “www.geico.com” which promotes and sells its motor vehicle insurance services. The website enables internet customers to access information regarding the Complainant’s insurance services, manage their policies and claims, learn more about the Complainant and obtain insurance quotes.

The Disputed Domain Name <kgeico.com> was registered on May 22, 2020 and redirects to various third party websites, that are not affiliated with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark GEICO. The Disputed Domain Name <kgeico.com> incorporates the Complainant’s trademark in its entirety. The only difference is the addition of the letter “k”, which does not prevent a finding of confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that it has never authorized the Respondent to use its GEICO trademark, that the Respondent has never been known by a name corresponding to the Disputed Domain Name, and that the Respondent can only have selected the Disputed Domain Name misleadingly to create an association with the Complainant’s GEICO trademark. In all these circumstances, the Complainant submits that the Respondent does not have any rights and/or legitimate interests.

The Complainant also contends that the Respondent has registered and is using the Disputed Domain Name in bad faith. The Respondent registered a confusingly similar domain name, which contains the Complainant’s well-known trademark in its entirety. The Respondent is offering the Disputed Domain Name for sale in an amount, which is greater than the Respondent’s out of pocket expenses.

The Disputed Domain Name attempts to redirect web traffic to websites that contain malware threats.

The Respondent was the respondent in three recent UDRP cases where Complainant claimed transfer of domain names (Government Employees Insurance Company (“GEICO”) v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0764 (transfer of the domain name <gegeico.com>); Government Employees Insurance Company (“GEICO”) v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1012 (transfer of the domain name <sgeico.com>); Government Employees Insurance Company (“GEICO”) v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1425 (still pending, claiming transfer of the domain name <jgeico.com>).

Further, the Respondent has a history of abusive registrations, wherein third party registered trademarks have been incorporated in the domain names. For example: Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0501 (transfer of the domain name <tommyubahama.com>). Accordingly, the Respondent has registered and is using the Disputed Domain Name in bad faith.

The Complainant requests the transfer of the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the name and mark GEICO. The Disputed Domain Name consists of the whole of that trademark, prefixed by the letter “k”. In the view of the Panel, the incorporation of the whole of the Complainant’s trademark into the Disputed Domain Name plus an additional letter gives rise to confusing similarity between the Disputed Domain Name and that trademark.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. This is sufficient to shift the burden of production to the Respondent. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the Disputed Domain Name, or evidence of rights or legitimate interests on its part in the Disputed Domain Name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.

There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

In the absence of any explanation from the Respondent for its choice of the Disputed Domain Name, the Panel accepts the Complainant’s submission that the Respondent is likely to have registered the Disputed Domain Name with the Complainant’s distinctive trademark in mind and with the intention of taking unfair advantage of the Complainant’s rights in that trademark. The Panel also accepts the Complainant’s unrebutted submissions and evidence that the Respondent registered the Disputed Domain Name with the intention of selling it for a sum in excess of its out-of-pocket costs of registration (paragraph 4(b)(i) of the Policy), given that the Disputed Domain Name has a minimum indicated price of USD 899 without any evidence from the Respondent as to its expenses, and that it has used the Disputed Domain Name misleadingly to attract Internet users to related websites for commercial gain, and also directing to websites that deliver malware (paragraph 4(b)(iv) of the Policy).

The fact that the Respondent was the respondent in three recent UDRP cases where Complainant claimed transfer of domain names contributes to the plausibility that the Respondent had knowledge of the Trademarks of the Complainant when filing the Disputed Domain Name.

In addition, the panel ex officio further established that the Respondent has been respondent in UDRP procedures far over 100 times. To the Panel's knowledge, the Respondent never filed a response and in all cases the transfer of the domain name was ordered (with the exception of one case, where the Respondent also did not file a Response, but the claim was rejected on a formality).

The registration of the Disputed Domain Name was clearly abusive, targeting the Complainant’s famous GEICO trademarks, which were well known long before the registration of the Disputed Domain Name. The circumstances of this case justify a finding of registration and use in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <kgeico.com> be transferred to the Complainant.

Richard C.K. van Oerle
Sole Panelist
Date: August 24, 2020