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Government Employees Insurance Company (GEICO) v. Gico [2004] GENDND 1229 (7 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (GEICO) v. Gico

Case No. D2004-0545

1. The Parties

The Complainant is Government Employees Insurance Company (GEICO), Washington, D.C., United States of America, represented by Melissa M. Cross and Roberta L. Horton of Arnold & Porter, Washington D.C, United States of America.

The Respondent was originally stated to be Modern Limited - Cayman Web Development. The Respondent was changed on August 1, 2004, to Gico, Administrator Domain, General Delivery, Georgetown Grand Cayman GT, Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name <gico.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2004. On July 23, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On July 28, 2004, Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. These contact details were different from those provided by the Complainant. On July 30, 2004, the WIPO Arbitration and Mediation Center indicated to the Complainant that the registrant identified by the registrar was not the person/identity specified in the Complaint and that this deficiency should be cured within five calendar days failing which the Complaint would be deemed withdrawn.

On July 30, 2004, in response to this notification, the Complainant wrote to the Center indicating that the registrant’s name had been changed since at the time of filing, the Whois record listed Modern Limited. as the registrant. The Complainant filed an amendment to the Complaint on August 1, 2004. That amendment changed the name of the Respondent to the current Respondent and noted that as of the date of the filing on July 22, 2004, the holder of the domain name was the initial Respondent. On August 3, 2004, the Complainant wrote to the Center indicating that, having difficulties sending the notice and amendment to the Respondent via email, it was sending it via Federal Express and facsimile.

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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2004.

The Center appointed Thomas Webster as the sole panelist in this matter on August 31, 2004. 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 factual background is taken from the Complainant’s Complaint and attached documents unless otherwise indicated.

The Complainant in this administrative proceeding is GEICO, an insurance company incorporated under the laws of Maryland. It offers a variety of insurance services including automobile and homeowners and has registered the following trademarks and service marks:

Mark	International Class	Registration No.	Registration Date
GEICO DIRECT	36	2,628,333	October 1, 2002
GEICO	36	2,601,179	July 30, 2002
GEICO DIRECT LINE	36	2,422,414	January 23, 2001
GEICO THE SENSIBLE	36	2,071,507	June 17, 1997
ALTERNATIVE GEICO DIRECT	36	2,071,336	June 17, 1997
GEICO DIRECT	16	1,442,076	June 9, 1987
GEICO	36	763,274	January 14, 1964

GEICO has also established a website located at “www.geico.com”, accessible through other GEICO-owned domain names such as <geicodirect.com>. The GEICO websites enable access to information regarding GEICO’s insurance services.

The disputed domain name was registered on May 28, 2002. The holder of the domain name as of July 22, 2004, was “Modern Limited – Cayman Web Development”. At some point between that date and July 28, 2004, the name of the holder was changed to “gico” with the same fax number as the initial holder.

The Complainant asserts that it “recently became aware that Respondent had registered the <gico.com> domain name and was using it to promote and advertise websites offering for sale insurance products by GEICO competitors”.

5. Parties’ Contentions

A. Complainant

Complainant contends that “Respondent is a serial cybersquatter who has registered over three thousand, five hundred domain names, including a plethora of infringing domain names”.

According to the Complainant, Respondent clearly has changed the registrant name on its domain name registration after Complainant filed this Complaint on July 22, 2004. The previous name listed on the Addresscreations.com Whois database at the time of filing the original Complaint was Modern Limited - Cayman Web Development.

The Complainant argues that “because the address and phone numbers of the two registrants are identical, it is clear that the registrants Modern Limited - Cayman Web Development and “Gico” are one and the same. This point is significant when considering that Modern Limited has been the subject of numerous UDRP complaints (all resulting in name transfers), as well as currently holds a large number of apparently infringing registrations that incorporate others’ famous trademarks.”

Therefore, the Complainant adds that it “has not attempted to resolve this matter informally due to Respondent’s status as a notorious cybersquatter.”

Moreover, the Complainant argues that the domain name <gico.com> is identical or confusingly similar to the GEICO Mark. According to the Complainant, ““Gico” is visually similar, and aurally identical, to the well-known GEICO mark” and therefore “the <gico.com> domain name is a clear misspelling of GEICO’s mark. This is a classic example of “typosquatting”, a practice which has been held by numerous administrative panels to be evidence of confusing similarity.”

The Complainant also argues that the Respondent has no legitimate interest or rights in the <gico.com> domain name. According to the Complainant, “Respondent has no connection or affiliation with GEICO and has not received any license or consent, express or implied, to use the GEICO marks in a domain name or in any other manner.” Furthermore, the Complainant alleges that the Respondent has never been known by the <gico.com> name, and that “the website associated with the <gico.com> domain name merely acts as a host page for links and advertisements for competitors’ websites.”

According to the Complainant, “such a use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.”

Finally, the Complainant asserts that the Respondent has registered and used the <gico.com> domain name in bad faith. According to the Complainant, “it is simply inconceivable that Respondent was unaware of GEICO’s rights in the GEICO marks. Geico engages in extensive advertising, including television advertising featuring its name and mark” and therefore “even a simple Internet search would have revealed Complainant’s extensive use of the GEICO marks as source identifiers.”

The Complainant claims that “Respondent is thus deemed to have constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the GEICO marks.”

In addition, the Complainant points out that “Respondent’s well-documented practice of registering domain names, including other companies’ well-known trademarks or obvious misspellings of such marks (e.g., <citibank.com>, <friutoops.com>), also demonstrates its bad faith in registering the <gico.com> domain name”.

Finally, the Complainant argues that “Respondent’s use of the <gico.com> domain name to knowingly and willfully promote direct competitors of Complainant in connection with a collection of links to those competitors’ websites demonstrates bad faith” and asserts that “Respondent’s participation in “click-through” advertising programs offered by various well-known search engines further illustrates how Respondent wrongfully capitalizes on the <gico.com> domain name”.

B. Respondent

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

6. Discussion and Findings

Under the Policy, paragraph 4(a) the Complainants must prove that each of the following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Respondent’s domain name <gico.com> is confusingly similar to Complainant’s GEICO mark, as they are only one letter different from the Complainant’s mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy 4(a)(i). (see Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it.)

In this particular case, the similarity is increased by the fact that both GEICO and GICO sound the same. The risk of confusion is also higher due to the fact that Complainant’s trademark is well known.

Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant argues that the misspelling of its trademark is being used by the Respondent to “promote and advertise websites offering for sale insurance products by GEICO competitors.” Furthermore, according to the Complainant, the Respondent has never been known by the “gico.com“ name.

Since the Respondent has not replied to the Complainant’s contentions, there is no argument indicating that the Respondent had a legitimate interest in respect of the domain name. (see Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221, finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

In addition, the Respondent is using the disputed domain name as a portal to other websites offering the same kind of services that are offered by the Complainant. Therefore it does not appear that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

For the sake of completeness, it should be noted that the current holder of the domain name is “gico”, which is of course the domain name. However, that name appears to have been first used in connection with the domain name after the Complaint was filed and there is no evidence that the Respondent was ever known by that name.

Therefore, according to the Policy paragraph 4(a)(ii) and paragraph 14(b) of the Rules, it does not appear that the Respondent had any rights or legitimate interest in respect of the domain name.

C. Registered and Used in Bad Faith

(i) Registration in bad faith

The Complainant relies on its trademark filings and the Respondent’s practice of registering other companies trade marks as evidence of the registration in bad faith.

The Complainant is correct that US trademarks are available on the Internet. However, the Panel is not aware of any decision holding that that in and of itself is sufficient to demonstrate registration in bad faith. If for example, the Respondent was from another country or active in another business area the Panel is not convinced that availability of trademarks on the Internet would suffice to give constructive notice. But that is not the case in this instance as the Respondent uses the website to produce insurance links and even refers to one of the Complainant’s trademarks. Therefore, the Respondent does appear to be active in the insurance area and at some point appears to have become familiar with the Complainant and even the Complainant’s website. There is no indication that the Respondent registered the website for any purpose other than that for which it is used. Therefore, in a situation such as this, where the Respondent has failed to file an answer, this actual use is an indication of the purpose for which the website was registered.

In addition, the current Respondent appears to be identical to the initial Respondent and they certainly share the same fax number. Therefore, the actions of the initial Respondent are relevant to considering the Respondent’s motivations in registering the trademark in the absence of an explanation from the Respondent of its background.

As the Complainant has demonstrated, the initial Respondent has a track record of cybersquatting and this pattern of conduct reinforces the Panel’s view that the Respondent’s registration was in bad faith.

(ii) Use in bad faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the domain name in bad faith, including:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant argues that the Respondent has been using the disputed domain name to “knowingly and wilfully promote direct competitors of Complainant in connection with a collection of links to those competitors’ websites” which “demonstrates bad faith.”

The Panel consulted the two sites “www.gico.com” and “www.geico.com” on September 6, 2004. The “www.gico.com” site focused on insurance products and proposed a further link to “www.geico.com”. The pages on the website on September 6, 2004, appear to be very similar if not identical to those submitted by the Complainant with the Complaint. However, the link on the page did not lead to “www.geico.com” but rather to “www.apps5.oingo.com”. The “www.geico.com” site is a site offering the insurance products of the Complainant.

The Panel is satisfied that the “www.gico.com” website was designed to attract potential customers based on a likelihood of confusion with the Complainant’s trademark. Respondent’s website has a very similar name (both in writing and, even more so, orally); it focuses on the same products; it mentions the Complainant’s trademark and even proposes a link that suggests to the consumer that it is linking to the Complainant’s site. The indications of bad faith are overwhelming and the Respondent has not sought to rebut them.

The Complainant relies heavily on the fact that the Respondent has changed name after the Complaint has been filed and the pattern of conduct of the former Respondent. In fact, not only has it changed name, but, as noted above, has changed its name to that of the domain name. This is a relevant factor in determining whether there has been use in bad faith.

Finally, since the Respondent has not replied to the Complainant’s contentions, he has failed to demonstrate his good faith in the registration or use of the domain name in issue.

Therefore, according to the Policy paragraph 4(a)(iii) and paragraph 14(b) of the Rules, it appears that the Respondent has registered and is using the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <gico.com> be transferred to the Complainant.

Thomas Webster
Sole Panelist

Dated: September 7, 2004