Decisión del Panel Administrativo nº D2019-1923 of WIPO Arbitration and Mediation Center, November 23, 2019 (case Government Employees Insurance Company v. ICS, INC., ICS INC.)
| Resolution Date | November 23, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Government Employees Insurance Company, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
The Respondent is ICS, INC., ICS INC., United Kingdom, internally represented.
The disputed domain name [grico.com] is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 22, 2019. On September 3, 2019, the Respondent transmitted an email request for the automatic four-day extension to the Response due date. The same day the Center, granted the automatic four-calendar day extension for response in accordance to paragraph 5(b) of the Rules. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Response was filed with the Center on September 13, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on September 30, 2019. 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 Complainant, Government Employees Insurance Company is an American insurance company, incorporated in Maryland, United States that is engaged in providing various types of insurance services including, among others, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, overseas and international insurances. It has been operating and trading in the insurance market sector for almost 80 years, since 1936, under the trademark GEICO, which is its company name acronym.
The Complainant, Government Employees Insurance Company is an American insurance company, incorporated in Maryland, United States that is engaged in providing various types of insurance services including, among others, automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, overseas and international insurances. It has been operating and trading in the insurance market sector for almost 80 years, since 1936, under the trademark GEICO, which is its company name acronym.
The Complainant uses the trademark GEICO to identify and promote its services and holds several trademark registrations in United States for the same on a standalone basis or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:
United States Trademark No. 763,274 GEICO, registered on January 14, 1964, in class 36;
United States Trademark No. 2,601,179 GEICO, registered on July 30, 2002, in class 36;
United States Trademark No. 1,442,076 GEICO DIRECT, registered on June 9, 1987, in class 16;
United States Trademark No. 2,071,336 GEICO DIRECT, registered on June 17, 1997, in class 36;
Copies of trademark registration certificates for the above-mentioned trademark registrations of the Complainant have been attached as Annexure-D to the Complaint.
The Complainant has over 17 million policies and insures more than 28 million vehicles. Further, the Complainant has over 40,000 employees and is one of the fastest-growing auto insurers in United States. The Complainant promotes and sells its insurance products and services through its website hosted at the “www.geico.com ”. The Complainant through the said website allows customers to access information regarding their policies, manage their policies and claims, learn more about the Complainant and obtain insurance quotes. A screenshot of the homepage of the Complainant’s website has been attached as Annexure- E to the Complaint.
According to the Registrar’s verification, the disputed domain name, [grico.com] had been registered on January 23, 2003 and currently stands registered in the name of the Respondent. Extracts of the WhoIs records for the disputed domain name have been attached as Annex A to the Complaint. The Respondent in its Response dated September 13, 2019 claimed to have acquired the disputed domain name in November, 2017. As is set out in the Response, the Respondent appears to be a “domainer”, a person in the business of purchasing domain names of potential value for website development, generic advertising, and possibly ultimate resale.
The disputed domain name at the time of filing the Complaint, resolved to a standard registrar parking website featuring pay-per-click (PPC) hyperlinks redirecting Internet users to third-party websites, not affiliated with the Complainant promoting Complainant and the competitors of Complainant. Printouts of a selection of websites to which the disputed domain name resolved, via redirection have been attached as Annexure - F to the Complaint. According to the evidence provided by Complainant, for the disputed domain name [grico.com], the same is available for sale at USD 6459 on the website of Domain Tools.
The Complainant states that the disputed domain name [grico.com] incorporates a common or an obvious misspelling of the Complainant’s GEICO trademark which is accompanied with a generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the disputed domain name is confusingly similar to its GEICO trademark, the only difference being that the letter “e” in the Complainant’s trademark is changed into the letter “r” in the disputed domain name. The Complainant further states that the disputed domain name is also confusingly similar to its GEICO trademark as the letters “e” and “r” are next to each other on a normal qwerty- keyboard, the difference between them only being a minor typo goes unnoticed by the average Internet user. The Complainant in this regard has placed reliance on Avid Dating Life Inc. v. Registration Private, Domains by Proxy, LLC / Online Management,[WIPO Case No. D2014-0460]. The Complainant contends that the disputed domain name intended is intended to be used by the Respondent to impersonate the Complainant and intercept and confuse consumers when looking for bona fide and well-known GEICO products and services or authorized partners.
The Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name [grico.com] as the Respondent has no connection or affiliation to Complainant and has not received any license or consent, whether express or implied to use the Complainant’s GEICO trademark in a domain name or in any other manner. The Complainant also contends that the Respondent has never been known by the disputed domain Name. In support of its said contentions, the Complainant has cited the UDRP decision, Marriott International, Inc. v. Thomas, Burstein & Miller,[WIPO Case No. D2000-0610].
The Complainant states that the Respondent’s misappropriation of the GEICO trademark in the disputed domain name was no accident. The Complainant contends that where a trademark is famous, as in the instant case, it is not one traders would legitimately choose unless they are seeking to create an impression of an association with the Complainant. The Complainant in this regard has placed reliance on Telstra Corporation Limited v. Nuclear Marshmallows,[WIPO Case No. D2000-0003].
The Complainant argues that the use of the disputed domain name to generate PPC revenue by the Respondent is not “use” in connection with a bona fide offering of goods and services and does not confer it with a legitimate interest in the disputed domain name. The Complainant in support of its contentions has relied on Skyscanner Limited v. Domain May Be for Sale, Check Afternic.com Domain Admin, Domain Registries Foundation,[WIPO Case No. D2018-1987].
The Complainant states that the Respondent could have no legitimate interest in the GEICO trademark since it is not a name that Respondent would have legitimately and randomly chosen to use. The Complainant has placed reliance on Telstra Corp. Ltd. v. Nuclear Marshmallows, supra.
The Complainant contends that the Respondent has also registered the disputed domain name [grico.com] in bad faith with knowledge of Complainant’s rights in its GEICO trademark and with an intent to profit off of from those rights. The Complainant states that it is inconceivable that the Respondent was unaware of the Complainant’s rights in the GEICO trademark when it registered the disputed domain name that incorporates obvious misspellings of Complainant’s famous federally registered GEICO trademark.
The Complainant argues that the Respondent had actual notice of Complainant’s rights. The Complainant contends that it has engaged in extensive advertising, including television advertising featuring its name and trademark GEICO and has offices throughout the world. The Complainant states that even a simple Internet search would have revealed that the Complainant’s extensive...
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