Government Employees Insurance Company (“GEICO”) v Cultee Entertainment

WIPO Case No. D2022-0827

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. Cultee Entertainment

Case No. D2022-0827

1. The Parties

Complainant is Government Employees Insurance Company (“GEICO”), United States of America (“United

States”), represented by Burns & Levinson LLP, United States.

Respondent is Cultee Entertainment, United States.

2. The Domain Name and Registrar

The disputed domain name <geicorep.net> is registered with Network Solutions (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2022. On March 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2022, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on March 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2022.

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The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 12, 2022. 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

Complainant is a multinational company, based in the United States. For decades, Complainant has provided insurance services under the mark GEICO. Complainant has various registrations for its GEICO mark, including United States Registration No. 2,601,179 (registered July 30, 2002). Complainant further owns the registration for the domain name <geico.com>, which Complainant uses to inform customers about its GEICO mark and its insurance services and products.

The disputed domain name was registered on February 8, 2022. Respondent has used the disputed domain name as a “pay-per-click” site, to provide sponsored links for insurance services that compete with those offered by Complainant under its GEICO mark. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s
trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)

Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it owns registrations and rights to the GEICO mark. Complainant
contends that its GEICO mark is “famous”, and that Complainant has issued over 18 million insurance policies
for over 30 million vehicles. Complainant contends that the disputed domain name incorporates in full its GEICO
mark, with the addition of the term “rep”, which consumers will likely associate with Complainant’s extensive
employee base and insurance services.

Complainant contends that Respondent has merely used the disputed domain name to set up a “pay per click” page meant to lure in customers looking for Complainant and its services, but that Respondent has no rights or legitimate interest in the registration or use of the disputed domain name. Rather, Complainant contends that

Respondent has acted in bad faith, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <geicorep.net> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered GEICO mark, and merely adds the descriptive term “rep”.

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Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive
words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this
first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters, WIPO
Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter Ikea Systems B.V. v. Polanski, WIPO Case No.
D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500
(transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-
1065 (transferring <cbsone.com>).

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in
bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the
domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to
[respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a
product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has
offered sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainant’s
trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Prior UDRP panels
have found Complainant to have a commercially strong mark, particularly in the United States, where
Respondent lists an address of record. See Government Employees Insurance Company (“GEICO”) v. Contact
Privacy Inc. Customer 1241497884 / Health Feather, All Natural Health Products Producing Better Health, WIPO
Case No. D2017-1577; Government Employees Insurance Company (“GEICO”) v. Jerome Crawford, WIPO
Case No. D2019-0112.

Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

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7. Decision

For all 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 <geicorep.net> be transferred to Complainant.

/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Dated: April 26, 2022