Government Employees Insurance Company (“GEICO”) v Timothy Barber

WIPO Case No. D2023-5199

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (“GEICO”) v. Timothy Barber

Case No. D2023-5199

1. The Parties

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

States” or “U.S.”), represented by Burns & Levinson LLP, United States

The Respondent is Timothy Barber, United States.

2. The Domain Name and Registrar

The disputed domain name <geico-auto.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2023. On December 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 (Redacted for Privacy, 1&1 Internet Inc) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 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 December 22, 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 December 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2024.

page 2

The Center appointed Clark W. Lackert as the sole panelist in this matter on January 22, 2024. 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 an internationally well-known insurance company which 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 its distinctive trademark GEICO since at least 1948.

Complainant has registered its trademark GEICO in multiple jurisdictions including:

Jurisdiction	Registration Number	Registration Date
WIPO - IR	1178718 (Designation to the	September 4, 2013
European Union)
United States	763274	January 14, 1964
United States	2601179	July 30, 2002

Through extensive use and promotional activities, the mark GEICO has become uniquely associated with
Complainant and its services. In fact, Complainant has over 16 million policies and insures more than 28 million
vehicles. Complainant also has over 38,000 employees, and is one of the fastest-growing auto insurers in the
U.S.

The Complainant maintains various social media accounts under its famous GEICO trademark, including Facebook, Twitter, Instagram, TikTok, YouTube, and LinkedIn, each of which platform hosts tens of thousands, and in some cases millions, of followers. In connection with its insurance products and services, Complainant has established a website located at “ which Complainant uses to promote and sell its insurance services under its GEICO trademark. The “ website enables Internet users to: access information regarding Complainant’s insurance services, manage their policies and claims, learn more about Complainant, and obtain insurance quotes.

The disputed domain name <geico-auto.com> was registered on November 16, 2023 and resolves to a parking page of the Registrar.

5. Parties’ Contentions

A. Complainant

The essential contention by Complainant is that the disputed domain name consists of Complainant’s famous GEICO trademark along with the descriptive term “auto-”, which directly describes Complainant’s well-known auto insurance offerings coupled with the generic Top Level Domain (“gTLD”) “.com.” Complainant’s trademark

rights in the mark GEICO for the purposes of standing to file a UDRP complaint. See section 1.2.1 WIPO registrations and use of the trademark GEICO satisfy the threshold requirement that Complainant has trademark see Government Employees Insurance Company v. Jerome Crawford, WIPO Case No. D2019-0112 (April 7, 2019) (finding that Complainant’s U.S. trademark registrations establish its trademark rights under the first element of the UDRP) and cases cited therein.

page 3

Complainant has not given any authorization for the use of its GEICO trademark in any form to the Respondent, nor does the Respondent offer any legitimate GEICO auto services on the website to which the disputed domain name resolves. Under these circumstances, 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 disputed domain name is currently being passively held and resolves to an inactive website. Complainant asserts that Respondent registered, is using and has used the disputed domain name to intentionally 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.

There is no evidence that Respondent has any legitimate claims to the disputed domain name and any current disputed domain name. This unauthorized use of the disputed domain name by Respondent severely harms Complainant by tarnishing and infringing its trademarks, reputation and goodwill in the United States. and around the world.

or conceivable future use of the disputed domain dame violates the Policy.

Respondent’s incorporation of Complainant’s famous, widely-known GEICO trademark into the disputed domain (August 29, 2020) (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”). The Complainant contends that the disputed domain name was registered and is being used in bad faith.

name creates a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. 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 (February 24, 2021) (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 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 (June 28,
2021) (characterizing GEICO as “one of the most recognizable insurance brands in the United States market”);

B. Respondent

The Respondent is in default and did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the

Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

page 4

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7.

The Panel finds that the addition of terms to a trademark, in this case “auto”, does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s GEICO trademark in its
entirety combined with the term “auto” related to the Complainant’s service, carries a risk of implied affiliation.

WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent copied a widely known trademark with the term “auto”
which indicates an intent to target that trademark to promote misdirection of Internet traffic, evidence of bad faith.
See, e.g., The Dow Chemical Company v. dowchemical [email protected] +86.7508126859, WIPO Case
No. D2008-1078 (finding <dowaychemical.com> registered in bad faith in view of the “widely known trademarks”
of the complainant); As WIPO Overview 3.0, section 3.1.4 states: “Panels have consistently found that the mere
registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos
or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated
entity can by itself create a presumption of bad faith.”

page 5

Furthermore, the disputed domain name is not being used and resolves to a parking page of the Registrar. Panels have also found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s GEICO trademark, and the composition of the disputed domain name, the absence of response from the Respondent and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds the third element of the Policy has been established.

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 <geico-auto.com> be transferred to the Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: February 1, 2024