Government Employees Insurance Company GEICO v Raymond Martin

WIPO Case No. D2023-3172

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Government Employees Insurance Company GEICO v. Raymond Martin

Case No. D2023-3172

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 Raymond Martin, Canada.

2. The Domain Name and Registrar

The disputed domain name <geicoinsu.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2023. On July 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 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 privacy service, and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 August 26, 2023.

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
Complaint, and the proceedings commenced on August 2, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was August 22, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 23, 2023.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 29, 2023. 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.

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4. Factual Background

The Complainant is an internationally well-known insurance provider who has been operating since 1948. registration No. 763,274 registered on January 14, 1964.

The disputed domain name was registered on March 21, 2023, and resolves to a website hosting Pay-Per-

Click (“PPC”) links including insurance related links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the domain name incorporates the Complainant’s trademark, which remains recognizable, together with the term “insu”, which is the first four letters of the term “insurance”. The generic Top-Level Domain “.com” can be ignored when assessing confusing similarity as it is viewed as a standard registration requirement.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain
name. The Complainant did not authorize the Respondent to use its trademark in the disputed domain name
and there are no legitimate GEICO services offered through the Respondent’s website. There is no bona
fide offering as the disputed domain name is used to host a parked page comprising PPC links which
compete or capitalize on the reputation of the Complainant’s trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is well-known and the Respondent must have been aware of it. The use of PPC links suggests that the disputed domain name was registered in order to make profit or exploit the

Complainant’s trademark. The Respondent did not reply to the demand letter and continued using the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for GEICO. The Panel is satisfied that the Complainant has established its ownership of the trademark GEICO.

The disputed domain name incorporates the Complainant’s trademark GEICO in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”).

The addition of the letters “insu” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The generic Top-Level Domain “.com” can be ignored when assessing confusing similarity as it is viewed as a standard registration requirement.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the
Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production of evidence shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. Therefore, the Complainant has established a prima facie case, and the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests.

bona fide use of the disputed domain name”.

Panels have found that the use of a domain name to host a parked page comprising PPC links does not benefit. There is no indication on the website that the Respondent has made a
represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s
mark. Many of the PPC links relate to insurance, which is the Complainant’s field of activity. Accordingly,
the Panel is of the view that the Respondent is trying to capitalize on the reputation and goodwill of the
Complainant’s mark. In Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, it was found
that the respondent had no rights or legitimate interests as “the sole purpose of the disputed domain name is

to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing
that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of registering the disputed domain name, the Respondent must have been aware of the
Complainant’s trademark for a number of reasons:

(i)        The Complainant’s trademark has been used and registered many decades before the disputed domain name was created.

(ii)       A simple Google search on GEICO reveals the Complainant’s business.

(iii)      The disputed domain name contains the letters “insu”, which are the first four letters of the word “insurance”, the Complainant’s industry.

(iv)      The website of the Respondent contains PPC links relating to insurance services.

Given that the disputed domain name resolves to a page with PPC links, there is bad faith use in the current circumstances. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258, the Panel found that “While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use”.

Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely
within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the
Respondent has registered the disputed domain name in order to trade off the reputation of the

Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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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 <geicoinsu.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: September 12, 2023