Government Employees Insurance Company v Melissa Ready

WIPO Case No. D2024-1188

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Melissa Ready

Case No. D2024-1188

1. The Parties

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

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

The Respondent is Melissa Ready, United States.

2. The Domain Name and Registrar

The disputed domain name <geicogeneralinsurance.com> (the “Disputed Domain Name”) is registered with

IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2024.
On March 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 20, 2024, 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 March 21,
2024, 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 amended Complaint on

March 26, 2024.

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 the Respondent of the
Complaint, and the proceedings commenced on March 27, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 17, 2024.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on April 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

The Complainant is a well-known insurance provider incorporated under the laws of the State of Nebraska, United States, that has provided insurance services since 1948. The Complainant offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. The Complainant, with over 38,000 employees, has over 16 million policies and insures more than 28 million vehicles.

The Complainant has been trading under the GEICO trademark for over 80 years. The Complainant owns registered trademarks in the United States Patent and Trademark Office (“USPTO”), including, but not limited to: GEICO, United States Trademark Registration No. 763,274, registered on January 14, 1964, with a first use anywhere and first use in commerce of December 31, 1948, in international classes 35 and 36; and GEICO, United States Trademark Registration No. 2,601,179, registered on July 30, 2002, in international class 36. The Complainant also owns international trademarks in various jurisdictions worldwide.

The aforementioned trademarks will hereinafter collectively be referred to as the “GEICO Mark”.

The Complainant owns the domain name <geico.com>, which resolves to its official website at insurance services, manage their policies and claims, learn more about the Complainant, and obtain insurance quotes.
“ and which the Complainant uses to promote and sell its insurance services under its

The Disputed Domain Name was registered on February 14, 2024, and resolves to an inactive error landing page that states that the website could not be reached. Thus, the Respondent is using the Disputed Domain Name passively.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the Disputed Domain Name. Notably, the Complainant contends that:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark as it incorporates the
entirety of the GEICO Mark followed by the terms “general” and “insurance”, and then followed by the
generic Top-Level Domain (“gTLD”) “.com”, which additions do not prevent a finding of confusing similarity;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not authorized the Respondent to register a domain name containing the GEICO Mark, the Respondent was not making a bona fide offering of goods or services, and the Respondent has allegedly not been commonly known by the GEICO Mark, or any similar name; and

- the Disputed Domain Name was registered and is being used in bad faith because, among other things, the association with the Complainant’s business field, and the Respondent uses the Disputed Domain Name passively.

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The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the GEICO Mark.

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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

It is uncontroverted that the Complainant has established rights in the GEICO Mark based on its decades of use as well as its registered trademarks for the GEICO Mark in the United States and other jurisdictions worldwide. The consensus view is that registration of a mark is prima facie evidence of validity. The Panel finds that the Complainant has shown rights in the GEICO Mark. WIPO Overview 3.0, section 1.2.1.

The Disputed Domain Name consists of the GEICO Mark in its entirety followed by the terms “general” and “insurance”, and then followed by the gTLD “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a descriptive term to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1 Thus, the Disputed Domain Name is confusingly similar to the Complainant’s GEICO Mark.

Based on the available record, the Panel finds that the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which a 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 that 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.

The Complainant’s prima facie case includes the fact that the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its GEICO Mark, that the Complainant does not have any type of business relationship with the Respondent, that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, and that there is no evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Moreover, based on the use made of the Disputed Domain Name to resolve to an inactive landing page, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. As other UDRP panels have contended, “[p]assively holding a domain name does not constitute a bona fide offering of goods or services”. Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779.

Further, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel finds that the Respondent is using the Disputed Domain Name with the intent to mislead by deceiving the

Complainant’s customers into incorrectly believing that they arrived at the Complainant’s website. Such use cannot conceivably constitute a bona fide offering of a product within the meaning of paragraph 4(c)(i) of the Policy or a noncommercial or fair use of the Disputed Domain Name.

Based on the available record, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the
Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s GEICO Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use have been done for the specific purpose of trading on the name and reputation of the Complainant and its GEICO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he

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only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the
fame of Complainant’s name and mark for commercial gain”).

Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Third, the fame of the GEICO Mark, which was used and registered by the Complainant decades in advance name is sufficient to find bad faith under Policy paragraph 4(a)(iii).

of the Respondent’s registration of the Disputed Domain Name, renders it wholly implausible that the
Respondent created the Disputed Domain Name independently. Therefore, the Panel finds it likely that the
Respondent had the Complainant’s GEICO Mark in mind when registering the Disputed Domain Name,
especially since the mark is recognizable, demonstrating bad faith. It also strains credulity to believe that the
Respondent did not know of the Complainant or its trademark when registering the Disputed Domain Name.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad
faith. Panels have found that the non-use of a domain name 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 or to provide any evidence of actual or contemplated good-faith use;
(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.

Based on the above, the Panel has taken into consideration the following factors in arriving at a finding of
bad faith registration and use: (i) the Complainant’s trademark is well-known; (ii) the Respondent appears to
have taken pains to conceal its identity by using a privacy protection service; and (iii) the Respondent has
not submitted a response in the proceeding. The Panel therefore finds that the Disputed Domain Name has
been used passively, and thus, the Panel concludes that the Respondent registered and used the Disputed

Domain Name in bad faith.

Based on the available record, the Panel finds that 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 <geicogeneralinsurance.com> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: May 6, 2024