Government Employees Insurance Company (GEICO) v PrivacyDotLink

WIPO Case No. D2022-0760

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (GEICO) v. PrivacyDotLink
Customer 4038023 / Sheldon Williams

Case No. D2022-0760

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 PrivacyDotLink Customer 4038023, Cayman Islands, United Kingdom / Sheldon Williams,

United States.

2. The Domain Name and Registrar

The disputed domain name <cancelgeico.com> is registered with GoDaddy Online Services Cayman Islands

Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2022.
On March 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 7, 2022, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from named Respondent and contact information in the Complaint. On March 7, 2022, the
Center sent an email communication to Complainant on providing the registrant and contact information
disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amendment to the Complaint on March 10, 2022.

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 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2022.

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The Center appointed Brian J. Winterfeldt 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 Government Employees Insurance Company (“GEICO”) is an insurance provider incorporated under the laws of the state of Nebraska, United States. Founded in 1936, Complainant offers a wide range of insurance services, including insurance brokerage and underwriting for automobiles, motorcycles,

homeowners, renters, condominiums, mobile homes, commercial properties, overseas travel, floods, and over 43,000 employees.

boat. Complainant has operated throughout the United States under the GEICO name since at least 1948.

Complainant owns several trademark registrations for the GEICO mark (the “Mark”) in multiple jurisdictions, with sample registration details as follows:

- GEICO, United States Trademark Reg. No. 763,274, registered on January 14, 1964;

- GEICO, United States Trademark Reg. No. 2,601,179, registered on July 30, 2002;

- GEICO, European Union Trademark Reg. No. 1,178,718, registered on September 4, 2013.

The disputed domain name was registered on November 11, 2019. Currently, the disputed domain name
<cancelgeico.com> resolves to a Spanish-language website featuring information about various popular

movies.

5. Parties’ Contentions
A. Complainant

According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s Mark was adopted and has been continuously used since at least as early as 1948 in connection with providing insurance services. Complainant maintains its online presence through its website hosted at its domain name <geico.com>.

Complainant argues that the disputed domain name fully incorporates the Mark and is confusingly similar to Complainant’s own domain name. Complainant also argues that the addition of the word “cancel” to “geico” is clearly not sufficient to avoid a likelihood of confusion with Complainant’s prior rights. Complainant argues that, due to the complete reproduction of Complainant’s company name and prior well known trademarks,

Internet users will obviously and wrongly think that the disputed domain name belongs to Complainant or has been registered in its name or for its account. Complainant argues that a likelihood of confusion is therefore undeniable and is reinforced by the high degree of recognition enjoyed by Complainant in relation to a wide range of insurance services.

Complainant asserts that Respondent lacks any rights or legitimate interests in the disputed domain name. resolves. Complainant also claims that it has not granted Respondent, by license or otherwise, permission to use the Mark in any way. Complainant argues that the disputed domain name was registered by Respondent without Complainant’s consent.

According to Complainant, Respondent does not have any trademark rights to the Mark, nor does

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Complainant argues that Respondent both registered and is using the disputed domain name in bad faith. According to Complainant, Respondent registered and used the disputed domain name intentionally in an attempt to attract Internet users to his website for financial gain by creating a likelihood of confusion with

Complainant's trademark. Complainant argues that Respondent intends to attract Internet users and consumers looking for legitimate GEICO services and/or authorized partners to Respondent’s own webpages all for Respondent’s illicit commercial gain. Complainant argues that Respondent could not have been unaware of the existence of Complainant’s numerous trademarks, company name, and domain name when registering the disputed domain name. Complainant argues that such actions clearly show the domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraphs 5(f) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the panel shall proceed to a decision on the basis of the complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(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 was registered and is being used in bad faith.

A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent

has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple trademark registrations for the GEICO

trademark as referenced above. Therefore, Complainant has established that it has rights in the Mark.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing

requirement and that the threshold test for confusing similarity involves a “reasoned but relatively the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO
Here, the disputed domain name incorporates the entirety of the Mark, adding only the descriptive word
“cancel,” which does not prevent a finding of confusing similarity between the disputed domain name and the

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Mark. A side-by-side comparison of the Mark and the disputed domain name reveals that the Mark is easily identifiable within the disputed domain name.

Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy
in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its

GEICO mark.

B. Rights or Legitimate Interests

prima facie

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a showing that forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Respondent possesses no rights or legitimate interests in the disputed domain name. See WIPO Overview
3.0, section 2.1. Once Complainant makes such a prima facie showing, the burden of production shifts to

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business or other organization) has been commonly known by the disputed

domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Again, Respondent has not provided any evidence or arguments to demonstrate that it has such rights.

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

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(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged

in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, 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.

Here, Respondent’s actions align with paragraph 4(b)(iv) of the Policy. The disputed domain name contains the entirety of the GEICO mark, with the addition of the descriptive word “cancel.” Due to the well-known and online nature of Complainant’s brand, evidenced by its numerous trademark registrations for GEICO as well as global brand recognition provided by Complainant through its online presence, along with the unauthorized use of the Mark in the disputed domain name, Respondent was undoubtedly aware of Complainant and the Mark when it registered the disputed domain name. Respondent’s impersonation of Complainant and use of the Mark in the disputed domain name clearly evidences bad faith on the part of Respondent in the registration and use of the disputed domain name.

This Panel therefore finds that Respondent acted in bad faith by its registration and use of the disputed domain name, intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with the purpose of attracting Internet users for commercial gain as

per paragraph 4(b)(iv) 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 <cancelgeico.com> be transferred to Complainant.

/Brian J. Winterfeldt/
Brian J. Winterfeldt
Sole Panelist
Date: April 22, 2022