Government Employees Insurance Company v See PrivacyGuardian.org /

WIPO Case No. D2022-0826

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. See PrivacyGuardian.org /
johnny leed

Case No. D2022-0826

1. The Parties

The Complainant is Government Employees Insurance Company, United States of America (“USA”), represented by Burns & Levinson LLP, USA.

The Respondent is See PrivacyGuardian.org, USA / johnny leed, China.

2. The Domain Name and Registrar

The disputed domain name <geicoapp.link> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2022. On March 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2022, 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 11, 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 the Respondent of the
Complaint, and the proceedings commenced on March 14, 2022. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Commencement of Panel Appointment Process on April 4, 2022.

The Center appointed Mihaela Maravela as the sole panelist in this matter on April 6, 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.

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The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

According to information in the Complaint, the Complainant is an 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 USA under the trademark GEICO since at least 1948. The Complainant has over 18 million policies and insures more than 30 million vehicles. The Complainant also has over 43,000 employees and is one of the fastest-growing auto insurers in the USA.

The Complainant has registered several trademarks consisting of GEICO including the International
trademark registration No. 1178718, registered on September 4, 2013, the USA trademark registrations No.
0763274 registered on January 14, 1964, and No. 2601179, registered on July 30, 2002.

The Complainant has also registered the domain name <geico.com> that it uses in connection with a website where its current and potential customers can obtain insurance quotes, insurance services and information and they can manage their policies and claims.

The disputed domain name was registered on December 12, 2021 and resolves to a parking page with links to third party service offerings.

5. Parties’ Contentions
A. Complainant

The Complainant argues that the disputed domain name consists entirely of the Complainant’s distinctive trademark GEICO, with the addition of the descriptive term “app”, along with a generic Top-Level-Domain (“gTLD”), therefore it is identical or confusingly similar to its GEICO trademark.

As regards the second element, the Complainant contends that it has not given 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. The Complainant argues that the disputed domain name resolves to a parked page displaying pay-per-click (“PPC”) advertisements that may lead Internet users to third parties completely unrelated to the Complainant for the obvious purpose of generating PPC revenues. The Complainant concludes that such use does not represent a bona fide offering.

In what concerns the third element, the Complainant argues that the Respondent’s incorporation of the Complainant’s famous, widely-known GEICO trademark into the disputed domain name creates a presumption of bad faith. Furthermore, the Respondent’s apparent use of the disputed domain name to reap undeserved PPC fees by directing website visitors to third-party websites, all 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. Finally, the Respondent has a history of abusively registering and using domain names incorporating third-party trademarks, which demonstrates bad faith under paragraph 4(b)(ii) of the Policy.

B. Respondent

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

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6. Discussion and Findings
6.1 Preliminary Matters

No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.

6.2 Substantive Matters

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the GEICO trademarks. The trademark GEICO is
reproduced in its entirety in the disputed domain name. The addition of the term “app”, which is a term often
used in connection with the supply of digital products and services, does not prevent a finding of confusing
similarity with the Complainant’s trademark GEICO, which is recognizable in the disputed domain name.
The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity
or confusing similarity for the purposes of the Policy, despite the addition of other words to such trademarks.
The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise)
does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a gTLD, such as “.link”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See sections 1.11.1 and 1.11.2 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie
case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in
order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark GEICO and claims that the Respondent has no legitimate reason, therefore no rights or legitimate interests in order to acquire and use the disputed domain name.

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bona comprising PPC links to third-party services. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The fact that the links on the Respondent’s webpage have no obvious connection with the Complainant is insufficient for the Respondent’s activities to comprise a bona fide offering of goods and services, as the distinctive character and reputation of the Complainant’s GEICO trademark is such that any use of the disputed domain name by the Respondent capitalizes on the repute of the Complainant’s trademark and cannot amount to use in connection with a bona fide offering of goods or services.

There is no evidence that the Respondent is using the disputed domain name in connection with a
fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the
Also, there is no evidence that the Respondent is commonly known by the disputed domain name.

Furthermore, considering that the disputed domain name consists of the Complainant’s identical trademark and the “app” term with an “inherent Internet connotation”, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima

facie case because he did not respond to the Complainant’s contentions.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The Complainant’s registration and use of the relevant trademarks predate the date at which the Respondent registered the disputed domain name. Given the distinctiveness of the Complainant’s trademark, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks, and to target those trademarks.

The disputed domain name is used by the Respondent to direct to a website displaying PPC advertisements. Given the confusing similarity between the GEICO trademark and the disputed domain name, the distinctiveness and repute of the Complainant’s trademark, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably, the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of GEICO services.

Also, there appears to be a pattern of abusive registrations by the Respondent, as the unrebutted evidence in the case file shows that the Respondent was involved in at least one previous UDRP proceeding where similar factual situations caused the concerned UDRP panels to decide in favor of the complainant (See Take-Two Interactive Software, Inc. v. johnny, leed johnny, WIPO Case No. D2020-1200). This fact also supports a finding grounded on paragraph 4(b)(ii) of the Policy, referring to a respondent registering “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 you have engaged in a pattern of such conduct”.

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In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 <geicoapp.link> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: April 18, 2022