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Generic Top Level Domain Name (gTLD) Decisions |
Government Employees Insurance Company (GEICO) v. Netsolutions proxy services
Case No. D2005-1088
1. The Parties
Complainant is Government Employees Insurance Company (GEICO) of Maryland, the United States of America, represented by Arnold & Porter of the United States of America.
Respondent is Netsolutions proxy services of Hong Kong, SAR of China.
2. The Disputed Domain Names and Registrar
The disputed domain names <gaccoinsurancedirect.com>, <geicomotorcycle.com> and <geicomotorcycles.com> (the “Disputed Domain Names”) are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2005. On October 21, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Names. On October 24, 2005, Fabulous.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on October 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 14, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2005.
The Center appointed Isabel Davies as the sole panelist in this matter on November 22, 2005. 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
Complainant has obtained numerous federally registered trademarks and service marks in connection with its goods and services (the “GEICO Marks”). The United States Patent and Trademark Office (“USPTO”) has granted federal trademark registrations to Complainant in numerous classes of goods and services, including the following, without limitation:
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 |
5. Parties’ Contentions
A. Complainant
Complainant is a well-known insurance company that has provided insurance services since 1936. Complainant offers numerous types of insurance services, including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance. In connection with these services, Complainant also offers emergency roadside assistance.
Complainant asserts that it has made extensive use of the GEICO Marks in connection with its services. The company invests large sums to promote and develop its marks through television, print media, and the Internet. Through their widespread and extensive use in connection with insurance, the GEICO Marks have become uniquely associated with Complainant and its services. In fact, Complainant has over 5.3 million customers and insures more than 8.6 million vehicles. Complainant also has over 22,000 employees, and is the largest direct marketer of private-passenger automobile insurance in the United States of America.
In connection with its insurance services, Complainant has established a website located at “www.geico.com,” which is also accessible through other GEICO-owned domain names including <geicodirect.com>. The “www.geico.com” website enables computer users to access information regarding Complainant’s insurance services, to learn more about Complainant, and to get insurance quotes.
Complainant states that it recently became aware that Respondent had registered the Disputed Domain Names and was using them to promote and advertise websites offering for sale insurance products of Complainant’s competitors. Complainant immediately recognized Respondent after having successfully enforced the Policy against Respondent earlier this year in connection with Respondent’s bad faith registration and use of 24 other infringing domain names that incorporated Complainant’s marks. See Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005).
When an Internet user looking for legitimate services of Complainant types any of the Disputed Domain Names into the address bar of his or her Internet browser, he or she is directed to a website used to advertise links to competing insurance companies.
Complainant states that it is also familiar with this Respondent because this same Respondent has adopted another alias, “Forum LLC,” to register more infringing domain names that incorporate Complainant’s famous marks (the subject of a separate WIPO UDRP complaint). It claims that the use of a new alias is evidenced by the fact that numerous infringing domain names incorporating both GEICO marks and third-party marks cited in Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005) (i.e. <radiodiseny.com>, <yahoofrnancial.com>), all direct users to Respondent’s same ad pages (and are registered with the same registrar). Complainant claims that it is apparent that Respondent merely changed the name and false contact information on its domain name registrations, requiring Complainant now to file two separate WIPO UDRP complaints against the same party because, technically, the registrant names are different (although no apparent transfer was ever made with the registrar).
Furthermore, when Internet users click on any of the links on Respondent’s page, they are directed to sponsored search listings for websites, many of which offer insurance products for sale that compete with the products offered by Complainant.
Complainant contends that Respondent is a serial cybersquatter – specifically, a “typosquatter” – and has registered at least 8,000 domain names, including a plethora of infringing domain names for use in connection with websites that advertise competing goods. For example, Respondent has registered many domain names that capitalize on variations and misspellings of famous trademarks, including the following: <wallmartdiscover.com>, <tajmahaltrump.com>, <hiltongrandclub.com>, <washingtonpostcrosswords.com>, and <hotpointappliance.com>. In addition, Respondent has registered numerous other infringing domain names under the alias “Forum LLC” such as <wieghtwhatchers.com>, <wieghtwatcers.com>, <radiodiseny.com>, <raidiodisney.com>, <stardustcasion.com> (a misspelling of “Stardust Casino”), <yahoofinacial.com>, <vangaurdinvestments.com>, <verizoncallcenter.com>, <suprbowl.com>, <worldmci.com>, <tevafootwear.com>, <aetnainsurnace.com>, <charteronefinacial.com>, <qualitysuitehotel.com>, <qualityinnniagarafalls.com>, <zenithinsumace.com> and <thehartfordinsurnace.com>.
Complainant states that Respondent and “Forum LLC” are the same party. The numerous infringing domain names registered to “Forum LLC” are the exact same domain names, with the exact same registrar, directing users to the exact same ad sites as those registrations cited in GEICO’s previous complaint that was the subject of the Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005) decision. The assertion that Respondent uses multiple aliases is further confirmed by its registration and use of domain names such as <tfccommodities.com> and <trumpcasion.com> under the alias “Webserv LLC,” whose fake phone number and address are the same as those used by “Forum LLC.” Complainant alleges that Respondent uses multiple aliases and phony contact information to avoid detection in these types of proceedings.
Complainant states that Respondent has been named in at least three other UDRP administrative proceedings requiring the transfer of domain names comprised of misspellings or variations of well-known trademarks:
• The Neiman Marcus Group, Inc. & NM Nevada Trust v. Netsolutions Proxy Services, National Arbitration Forum Case No. FA482630 (July 6, 2005) (ordering transfer of the domain name <neimanmarcusoutlet.com>);
• Grand Lodge Fraternal Order of Police v. Forum LLC, National Arbitration Forum Case No. FA493393 (July 28, 2005) (ordering transfer of the domain name <grandlodgefop.com>); and
• East Kentucky Network, LLC v. Forum LLC, National Arbitration Forum Case No. FA528216 (September 22, 2005) (ordering transfer of the domain name <appalachianwireless.com>).
The administrative panels in all of these proceedings held that Respondent registered and used domain names in bad faith.
Complainant states that Respondent’s obvious reputation as a cybersquatter, coupled with the fact that Complainant already successfully enforced the Policy against Respondent earlier this year for registering 24 infringing domain names that incorporate the GEICO mark, see Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005), clearly indicates that attempts at an informal resolution would be futile. Complainant states that, as in prior instances, investigation of Respondent’s Whois information revealed that the phone number provided by Respondent is false and no fax number is listed. It contends that the only thing that has changed is that Respondent has added a few new aliases to its operation and has registered even more infringing domain names.
Complainant makes the following legal arguments:
A. Respondent’s Disputed Domain Names are Identical or Confusingly Similar to the GEICO Marks
The Disputed Domain Names are confusingly similar to Complainant’s marks.
In addition to incorporating the literal GEICO Marks into its Disputed Domain Names, Respondent also included intuitive misspellings of the GEICO Marks. For instance, the domain name <gaccoinsurancedirect.com> is visually and aurally similar to the well-known GEICO Marks. Complainant contends that Internet users who intend to visit one of Complainant’s websites may inadvertently type any one of these misspellings into the address bar of their web browser only to be misdirected to Respondent’s websites. This is a classic example of “typosquatting,” a practice that has been held by numerous administrative panels to be evidence of confusing similarity.
Complainant argues that the confusing similarity is only compounded by the fact that Complainant has registered and uses the <geico.com> domain name to direct Internet users to its official website. Moreover, it contends that the addition of a generic top-level domain such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
B. Respondent Has No Legitimate Interest or Rights in the Disputed Domain Names
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has no connection or affiliation with Complainant and Complainant states that Respondent has not received any license or consent, express or implied, to use the GEICO Marks in a domain name or in any other manner.
Complainant believes that Respondent has never been known by the Disputed Domain Names.
Complainant contends that, upon information and belief, Respondent’s only use of the Disputed Domain Names is in connection with the websites described above and that Respondent is using the Disputed Domain Names to misdirect Internet traffic to Respondent’s own advertising website, which advertises links to competing insurance companies and other services. Such a use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
Complainant also contends that the misspelling of a well-known mark in a domain name to divert Internet users to a website sponsored by Respondent is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy and it is not a legitimate, noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
Complainant contends that Respondent’s misappropriation of the Disputed Domain Names was no accident. Where a mark is famous, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with Complainant (see Telstra Corporation Limited v Nuclear Marshmellows, WIPO Case No. D2000-0003 (February 18, 2000)). Accordingly, a “trader” such as Respondent could have no legitimate interest in the GEICO Marks.
C. Respondent Registered and Used the Disputed Domain Names in Bad Faith
(i) Respondent Registered the Disputed Domain Names in Bad Faith
Complainant alleges that Respondent has registered the Disputed Domain Names in bad faith by doing so with knowledge of Complainant’s rights in the GEICO Marks. Complainant alleges that it is simply inconceivable that Respondent was unaware of Complainant’s rights in the GEICO Marks when it registered the Disputed Domain Names that incorporate literal versions of Complainant’s mark (particularly when the underlying websites advertise Complainant’s competitors). First, Respondent registered two of these new domain names on March 2, 2005 – two months after a WIPO UDRP panel issued its decision against Respondent in the previous case. Thus, Complainant states that not only was Respondent aware of Complainant’s rights in its marks, it deliberately and audaciously turned right around and registered at least two more infringing domain names after the decision in Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005) was issued. Such flagrant disregard of both the Policy and Complainant’s trademark rights clearly, in Complainant’s view, evidences Respondent’s abuse of the domain name system by registering the Disputed Domain Names in bad faith.
In addition to Respondent’s actual notice of Complainant’s rights, Complainant claims that Respondent clearly had constructive notice. Complainant engages in extensive advertising, including television advertising, featuring its name and mark. Complainant contends that its rights in the GEICO Marks also would have been obvious through basic domain name searches and a simple Internet search and other searches of USPTO records that are readily accessible online. Respondent is thus deemed to have constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the GEICO Marks. Complainant contends that knowledge of Complainant’s rights is further evidenced by the fact that Respondent has directed the Disputed Domain Names to websites advertising and selling auto insurance.
Finally, Respondent’s well-documented practice of registering domain names that include other companies’ well-known trademarks or obvious misspellings of such marks for the purpose of generating advertising revenue (i.e. <verizoncallcenter.com>, <qualitysuitehotel.com>) also demonstrates its bad faith in registering the Disputed Domain Names. A pattern of registering variations of other parties’ well-known trademarks is “probative in showing bad faith on the part of the Respondent” (see Doctor. Ing. h.c. F. Porsche AG v. Stonybrook Investments Limited, WIPO Case No. D2001-1095 (October 26, 2001)). As set forth above, Respondent has registered a variety of domain names consisting or comprised of others’ trademarks, or common misspellings or variations thereof, for the purpose of diverting Internet traffic to Respondent’s own advertising websites. Given its pattern of conduct, Respondent’s bad faith in registering the Disputed Domain Names is irrefutable.
(ii) Respondent Used the Disputed Domain Names in Bad Faith
For the same reasons set forth above, it is inconceivable that Respondent’s use of Complainant’s literal marks can be construed as anything but bad faith. Moreover, with respect to the misspelled domain names, it is well settled among numerous WIPO UDRP panels that Respondent’s very method of infringement (i.e. typosquatting to misdirect Internet traffic) demonstrates bad faith use under the Policy.
Complainant contends that Respondent must have expected that any use of the Disputed Domain Names would cause harm to GEICO. The Disputed Domain Names – closely similar in appearance and sound to “GEICO” – are so “obviously indicative” of GEICO’s products and services that Respondent’s use of these domain names would “inevitably lead to confusion of some sort” (see AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000)).
B. Respondent
Respondent did not reply to Complainant’s contentions.
A. Identical or Confusingly Similar
This case relates to registration of three domain names, namely <geicomotorcycle.com>, <geicomotorcycles.com> and <gaccoinsurancedirect.com>.
In relation to <geicomotorcycle.com> and <geicomotorcycles.com>, the “geico” element of the domain names is identical to some of the GEICO Marks. The addition of “motorcycle” and “motorcycles” to the domain name does not detract from the similarity between the domain names and the GEICO Marks, particularly bearing in mind the generic nature of the term “motorcycle” and “motorcycles”. Accordingly, the Panel is satisfied that these domain names are confusingly similar to the GEICO Marks, in which Complainant has rights.
In relation to <gaccoinsurancedirect.com>, the first part of the domain name, “gacco,” is visually and aurally similar to Complainant’s GEICO registered trademark and constitutes typosquatting as referred to in Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (November 30, 2003) (misspelling in trademarks constitutes “typosquatting” and there is evidence of confusing similarity); Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (April 17, 2003) (“It is well established that domain names that are misspellings of trade and service marks may be confusingly similar… In fact, typosquatting is intended to be confusing to Internet users in order to lure them to the registrants’ websites.”) The addition of “insurancedirect” does not assist Respondent in view of GEICO’s business in insurance and its registrations for GEICO DIRECT. Accordingly, the Panel is satisfied that this domain name is also confusingly similar to the trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent has, by failing to respond, shown no rights or legitimate interests in the Disputed Domain Names <geicomotorcycle.com>, <geicomotorcycles.com> and <gaccoinsurancedirect.com>. As Complainant has established a prima facie case that Respondent has no rights to or legitimate interests in the Disputed Domain Names, the Panel finds that this element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
As evident from Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919 (January 7, 2005), Respondent has previously registered 24 domain names incorporating the GEICO Marks. Accordingly, the Panel is satisfied that Respondent was aware of the GEICO Marks at the time that two of the Disputed Domain Names were registered. Complainant advertises widely and it is inconceivable that Respondent was unaware of Complainant’s business at the time the Disputed Domain Names were registered. The Panel accepts that Respondent registered the Disputed Domain Names in issue in bad faith.
Respondent, by use of the Disputed Domain Names, redirects Internet users away from Complainant’s website to its own website and thus damages Complainant’s business by diverting business directly or by interesting an Internet user who arrives at Respondent’s website in error in services which compete with those of Complainant.
Accordingly, the Panel accepts that Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
The Panel determines that Respondent acted in bad faith in registering and using the Disputed Domain Names.
7. Decision
Having established all three elements required by paragraph 4(a) of the Policy, it is the decision of the Panel that the requested relief be granted. Accordingly, for all the foregoing reasons, it is ordered that the Disputed Domain Names <geicomotorcycle.com>, <geicomotorcycles.com> and <gaccoinsurancedirect.com> be transferred from Respondent to Complainant. The Panel therefore requests the Registrar to transfer the Disputed Domain Names to Complainant.
___________________________________________
Isabel Davies
Sole Panelist
Date: December 15, 2005
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URL: http://www.worldlii.org/int/other/GENDND/2005/2107.html