Government Employees Insurance Company v Wu Yu

WIPO Case No. DCO2022-0020

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Wu Yu

Case No. DCO2022-0020

1. The Parties

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

The Respondent is Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <geicomilitary.co> is registered with Dynadot, 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 10, 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 the Commencement of Panel Appointment Process on April 5, 2022.

Complaint, and the proceedings commenced on March 15, 2022. In accordance with the Rules, paragraph
5, the due date for Response was April 4, 2022. The Respondent did not submit any formal response. The

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The Center appointed Mihaela Maravela as the sole panelist in this matter on April 8, 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.

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, and 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 February 7, 2022 and resolves to a parking page with links to third party service offerings in the field of insurance services. The Complainant has provided evidence that the disputed domain name is offered for sale on a third-party platform for USD 1,999.

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 generic or descriptive term “military”, along with a country-code Top-Level Domain (“ccTLD”), 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 with a series of hyperlinks comprised of wording relevant to the Complainant and its business, as well as direct hyperlinks to its competitors. 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 promotion of an offer to sell the disputed domain name for USD 1,999, far in excess of any out-of-pocket expenses directly related to the disputed domain name, along with the Respondent’s apparent use of the disputed domain name to reap undeserved PPC fees 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 form or otherwise exploit the Complainant’s GEICO trademark. Finally, the Complainant argues that previous panels have found that the Respondent is a serial cybersquatter who engages in a pattern of registering numerous domain names containing famous brands, such as the Complainant’s GEICO trademark, and that the Respondent’s use and registration of the

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disputed domain name is a continuation of this pattern of targeting famous trademarks and strongly supports

a finding of bad faith.

B. Respondent

Apart from one brief email communication, asking for letters not to be physically sent to China in the future, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Matters

No substantive response has been received from the Respondent in this case. 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.

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 “military” 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 purpose 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 ccTLD, such as “.co”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 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).

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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 to acquire and use the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the disputed domain name was used to host a parked page comprising PPC

links to competing 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”. In this case, the PPC links are
related to the Complainant’s trademark GEICO and generate search results with competing services to those
offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests to

the Respondent.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name.

Furthermore, 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 for services related to the Complainant’s services. Given the confusing similarity between the GEICO trademark and the disputed domain name, 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 other UDRP proceedings where similar factual situations caused the concerned UDRP panels to decide in favor of the complainants. 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”.

The Panel further notes that according to the unrebutted evidence put forward by the Complainant, the disputed domain name was put for sale at a minimum price of USD 1,999. This is an additional element that

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sustains in the Panel’s view bad faith registration and use of the disputed domain name, primarily for the
purpose of selling it to the Complainant under paragraph 4(b)(i) of the Policy.

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 <geicomilitary.co> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: April 22, 2022