Government Employees Insurance Company (“GEICO”) v lisa boone

WIPO Case No. D2023-2873

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. lisa boone

Case No. D2023-2873

1. The Parties

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

represented by Burns & Levinson LLP, United States of America.

The Respondent is lisa boone, United States of America.

2. The Domain Name and Registrar

The disputed domain name <geicosupport.online> 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 5, 2023.

On July 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2023, 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 (Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2023, 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 amendment to the Complaint on July 12, 2023, identifying the Respondent named in Section 1 above.

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 the Respondent of the the due date for Response was August 5, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 21, 2023.

The Center appointed Gregory N. Albright as the sole panelist in this matter on August 25, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The following information is derived from the Complaint and materials submitted by the Complainant.

The Complainant is the owner of the following registrations:

- United States Reg. No. 763,274 for the GEICO service mark, in class 102, issued by the United
States Patent and Trademark Office on January 14, 1964;

- United States Reg. No. 2,601,179 for the GEICO service mark, in international class 036 (U.S.
Classes 100, 101 and 102), issued by the United States Patent and Trademark Office on July 30,
2002; and

- Registration No. 1178718 for the GEICO service mark, in international class 036, issued by the
European Union Intellectual Property Office on September 4, 2013.

The disputed domain name was registered on June 14, 2023, and resolves to a website hosting pay-per- click links.

5. Parties’ Contentions

A. Complainant

The Complainant is an internationally well-known insurance provider who has provided its insurance services - including insurance brokerage and underwriting for automobiles, motorcycles, homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and boats - throughout the United States under the mark GEICO since at least 1948.

Through extensive use and promotional activities, the mark GEICO has become uniquely associated with the million vehicles. The Complainant also has over 43,000 employees, and is one of the fastest-growing auto insurers in the United States.

The Complainant maintains various social media accounts under its famous GEICO mark, including in some cases millions, of followers.

In connection with its insurance products and services, the Complainant has established a website located at

“ which the Complainant uses to promote and sell its insurance services under its GEICO

trademark. The “ website enables computer users to: access information regarding the

Complainant’s insurance services, manage their policies and claims, learn more about the Complainant, and

obtain insurance quotes.

The Complainant’s trademark registrations in the mark GEICO satisfy the threshold requirement that the

Complainant has trademark rights in the mark GEICO for the purposes of standing to file a UDRP case.

Domain names are identical or confusingly similar to trademarks under the Policy when the relevant trademark is recognizable within the disputed domain name regardless of the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise). The disputed domain name incorporates the distinctive GEICO trademark and is therefore identical or confusingly similar to the GEICO

trademark regardless of the inclusion of the generic or descriptive term “support”.

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Furthermore, the gTLD “.com” in the disputed domain name is viewed as a standard registration requirement

and as such is disregarded under the first element confusing similarity test. As a result, the disputed domain

name’s gTLD does not add any distinction or avoid confusing similarity. Accordingly, the disputed domain

name is identical or confusingly similar to the Complainant’s trademark, GEICO.

The Complainant has not given the Respondent any authorization for the use of its GEICO trademark in any form, nor does the Respondent offer any legitimate GEICO services on the website to which the disputed domain name resolves. Under these circumstances, the Respondent possesses no rights in, and cannot conduct any legitimate business under the disputed domain name nor possibly legitimize its incorporation of GEICO, a highly distinctive and famous trademark, into the disputed domain name.

The Respondent lacks rights or legitimate interests in the disputed domain name because there is no

evidence that: (i) the Respondent’s use of, or demonstrable preparations to use, the disputed domain name

relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the disputed
domain name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed

domain name.

Moreover, the Respondent is exploiting the Complainant’s world-famous, registered trademark, GEICO, into

a domain name to host apparent pay-per-click (“PPC”) hyperlinks directing visitors to third-party websites, including those operated by the Complainant’s competitors, in an effort to reap undeserved proceeds from

Internet users, in blatant violation of the Policy.

The Respondent’s incorporation of the Complainant’s famous, widely-known GEICO trademark into the

disputed domain name creates a presumption of bad faith. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. GEICO is a famous

trademark that is one of the most recognizable insurance brands in the United States and indeed, is known

throughout the world. Government Employees Insurance Company (“GEICO”) v. 尹军(yinjun), WIPO Case

No. D2020-3332 (finding the GEICO trademark to be “known throughout the world” as a result of extensive use and advertising creating “an exclusive connection between the GEICO mark and the Complainant” such

that it should be presumed that respondent knew or should have known about the Complainant’s GEICO

mark or has exercised the sort of willful blindness that would still support a finding of bad faith); Government

Employees Insurance Company v. Joel Rosenzweig, RegC, WIPO Case No. D2021-1221 (characterizing

GEICO as “one of the most recognizable insurance brands in the United States market”); Government

Employees Insurance Company (“GEICO”) v. Jun Yin, WIPO Case No. DCO2020-0037 (finding the GEICO

Mark so well-known that when a “disputed domain name entirely reproduces the distinctive GEICO mark,…[it is] highly unlikely without knowledge of the Complainant or its marks”).

In addition, the Respondent’s apparent use of the disputed domain name to reap undeserved PPC fees to unfairly profit from the Complainant’s reputation strongly suggests that the Respondent’s intent in registering

the disputed domain name was to profit in some fashion from or otherwise exploit the Complainant’s GEICO

trademark, all in bad faith. WIPO Overview 3.0, section 3.1.1; see Government Employees Insurance

Company v. Wu Yu, WIPO Case No. DCO2022-0020 (transferring <geicomilitary.co> to the Complainant and

finding the respondent’s use of the domain name to direct to a website showing PPC advertisements for

services related to the Complainant’s field of business is evidence of bad faith).

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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.

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Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Complainant has shown it has long-established rights in the well-known GEICO service mark, for which it owns registrations in the United States, and the European Union.

The disputed domain name incorporates the entirety of the Complainant’s mark, and the Complainant’s mark

is a prominent and instantly recognizable part of the disputed domain name.

The addition of “support” to the disputed domain name does not, in the Panel’s view, prevent confusing

similarity between the Complainant’s mark and the disputed domain name. See WIPO Overview 3.0, section

1.8. And the generic Top-Level Domain suffix (“.com”) is properly disregarded for purposes of assessing

confusingly similarity. Id.

The Panel therefore finds that the disputed domain name is confusingly similar to the GEICO mark.

The first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that

proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible

task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to
come forward with such relevant evidence, the complainant is deemed to have satisfied the second
element.” WIPO Overview 3.0, section 2.1.

Here, the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that it has not given

the Respondent permission to use the GEICO mark in any manner. Nor is there any evidence that “Geico” is the Respondent’s personal name, or that the Respondent is known by, or has acquired any trademark rights

in the disputed domain name.

In addition, the nature of the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of

WIPO Jurisdictional Overview 3.0 (“Even where a domain name consists of a trademark plus an additional

term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute

fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”).
The Panel finds that the addition of “support” to the GEICO mark in the disputed domain name tends to

suggest that (1) the disputed domain name is affiliated with the Complainant’s insurance company, and (2) the Complainant’s insureds can obtain customer support at the website to which the disputed domain name

resolves. The Respondent has not responded to the Complaint to dispute this point, or to otherwise assert

any rights or legitimate interests in respect of the disputed domain name.

The second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel finds sufficient evidence that the Respondent registered the disputed domain name in bad faith. It
may be inferred that the Respondent registered the disputed domain name with knowledge of the
Complainant and its GEICO service mark because the Complainant owns numerous registrations of the

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mark, based on use in commerce since 1948, that pre-date the June 14, 2023 registration of the disputed

domain name. Further, GEICO is a distinctive and well-known mark, particularly in the United States where

the Respondent reportedly resides, and it appears the Respondent’s adoption of the mark in its entirety, as a

prominent part of the disputed domain name, was deliberate.

The Panel finds bad faith use of disputed domain name because the website to which the disputed domain name resolves hosts apparent pay-per-click hyperlinks directing visitors to third-party websites, including

those operated by the Complainant’s competitors, in an apparent effort by the Respondent to profit from

unauthorized use of the Complainant’s mark.

The third element of paragraph 4(a) of the Policy is satisfied.

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 <geicosupport.online> be transferred to the Complainant.

/Gregory N. Albright/

Gregory N. Albright

Sole Panelist
Date: September 8, 2023