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Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany [2005] GENDND 311 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company (GEICO) v. Forum LLC

Case No. D2005-1131

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 Forum LLC of Roseau, Dominica.

2. The Domain Names and Registrar

The disputed domain names:

<gaccoautoinsurance.com>
<gaccocarinsurance.com>
<gaccodirect.com>
<gaccoinsurance.com>
<gackoautoinsurance.com>
<gackocarinsurance.com>
<gackodirect.com>
<gackoinsurance.com>
<gackoinsurancedirect.com>
<gacoautoinsurance.com>
<gacocarinsurance.com>
<gacodirect.com>
<gacoinsurance.com>
<gacoinsurancedirect.com>
<gaicocarinsurance.com>
<gaicoinsuranceco.com>
<gaicoinsurancecompany.com>
<geccoautoinsurance.com>
<geccodirect.com>
<geccoinsurancedirect.com>
<geckoautoinsurance.com>
<geckocarinsurance.com>
<geckoinsurancedirect.com>
<gecoautoinsurance.com>
<gecocarinsurance.com>
<gecoinsurance.com>
<gecoinsurancecompany.com>
<gecoinsurancedirect.com>
<gecoinsurence.com>
<giacoautoinsurance.com>
<giacocarinsurance.com>
<giacodirect.com>
<giacoinsurance.com>
<giacoinsurancedirect.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 27, 2005. On October 28, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Names. On October 31, 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 November 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2005.

The Center appointed Isabel Davies as the sole panelist in this matter on November 30, 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 states 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 its widespread, extensive use in connection with insurance, Complainant states that 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, but not limited to, <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 by Complainant’s competitors. Complainant states that it 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 twenty-four 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.

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” – who has registered at least eight thousand domain names, including a plethora of infringing domain names for use in connection with websites that advertise competing goods. For example, Respondent has registered numerous domain names that capitalize on variations and misspellings of famous trademarks, including the following: <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>, <zenithinsurnace.com> and <thehartfordinsurnace.com>. In addition, Respondent also has registered numerous other infringing domain names under the alias “Netsolutions Proxy Services”, such as <wallmartdiscover.com>, <tajmahaltrump.com>, <hiltongrandclub.com>, <washingtonpostcrosswords.com> and <hotpointappliance.com>, just to name a few. The domain names listed above represent only a small fraction of Respondent’s apparently infringing domain names. Clearly, Respondent is in the business of typosquatting.

Furthermore, Complainant states that Respondent has been named in at least four other UDRP administrative proceedings requiring the transfer of domain names comprised of misspellings or variations of well-known trademarks:

- Hancock Fabrics, Inc. v. Forum LLC, NAF, No. FA0508000547844 (October 11, 2005) (ordering transfer of the domain name <hancock-fabrics.com>);

- Grand Lodge Fraternal Order of Police v. Forum LLC, NAF, No. FA0506000493393 (July 28, 2005) (ordering transfer of the domain name <grandlodgefop.com>);

- East Kentucky Network, LLC v. Forum LLC, NAF, No. FA0508000528216 (September 22, 2005) (ordering transfer of the domain name <appalachianwireless.com>); and

- Neiman Marcus Group, Inc. & NM Nevada Trust v. Netsolutions Proxy Services, NAF, No. FA0505000482630 (July 6, 2005) (ordering transfer of the domain name <neimanmarcusoutlet.com>).

The administrative panels in all of these proceedings held that Respondent registered and used domain names in bad faith.

Complainant states that Respondent and “Netsolutions Proxy Services” are the same party. The numerous infringing domain names registered “Forum LLC” are the exact same domain names, with the exact same registrar, caching 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 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.” It is stated that Respondent uses multiple aliases and false contact information to avoid detection in these very types of proceedings.

Respondent’s reputation as a cybersquatter, coupled with the fact that Complainant already successfully enforced the Policy against Respondent earlier this year for registering twenty-four infringing domain names that incorporate the GEICO mark, see Government Employees Insurance Company, supra, indicates that attempts at an informal resolution would be futile. 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. Complainant 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 Confusingly Similar to the GEICO Marks

Complainant contends that the Disputed Domain Names are confusingly similar to GEICO’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 Complainant contends that the domain name <giacodirect.com> is visually and aurally similar to the well-known GEICO Marks. 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. Complainant contends that this is a classic example of “typosquatting,” a practice that has been held by numerous administrative panels to be evidence of confusing similarity.

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, the addition of a generic top-level domain name 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 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.

Upon information and belief, Respondent’s only use of the Disputed Domain Names is in connection with the websites described above. Complainant contends 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.

Finally, 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 Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). Accordingly, a “trader” such as Respondent could have no 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 contends that Respondent has registered the Disputed Domain Names in bad faith by doing so with knowledge of Complainant’s rights in the GEICO Marks. It states that it is simply inconceivable that Respondent was unaware of Complainant’s rights in the famous GEICO Marks when it registered the Disputed Domain Names that incorporate literal versions of Complainant’s mark (particularly when the underlying websites advertise GEICO’s competitors). In addition to Respondent’s actual notice of Complainant’s rights based on the WIPO January 2005 decision against it, see Government Employees Insurance Company, supra, Respondent clearly had constructive notice as well. Complainant engages in extensive advertising, including television advertising, featuring its name and mark. Even a simple Internet search would have revealed Complainant’s extensive use of the GEICO Marks as source identifiers. Complainant’s rights in the GEICO Marks also would have been obvious through basic domain name searches and other searches of the 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. Such 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, Complainant contends that 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 (e.g <verizoncallcenter.com>, <qualitysuitehotel.com>) also demonstrates its bad faith in registering the Disputed Domain Names. As set forth under paragraph 5A, Complainant states that 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 in Complainant’s view irrefutable.

(ii) Respondent Used the Disputed Domain Names in Bad Faith

For the same reasons set forth above, Complainant contends that 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 – typosquatting to misdirect Internet traffic – demonstrates bad faith use under the Policy.

Similarly, as described above, Complainant contends that Respondent used the Disputed Domain Names to misdirect Internet traffic to its various websites for commercial gain. Such flagrant disregard of both the Policy and GEICO’s trademark rights is alleged by Complainant clearly to evidence Respondent’s abuse of the domain name system in registering and using the Disputed Domain Names.

Complainant states that Respondent must have expected that any use of the Disputed Domain Names would cause harm to Complainant. 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 the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This dispute relates to the registration of thirty-four (34) domain names. None of the domain names incorporates a mark identical with Complainant’s GEICO registered trademarks. However, all thirty-four domain names in dispute visually and aurally are similar to the GEICO Marks and the plethora of registrations of these domain names indicates that it is Respondent’s intention to capture as many variations of the GEICO Marks in order to ensure confusion among Internet users by blatant “typosquatting”.

The typosquatting relates not only to the use of “gacco”, but also to the use of the non-distinctive term ‘insurance’, sometimes spelled “insurence”, and the addition of “direct” to variations on the “gacco” theme, which adds to the confusing similarity in that the Complainant has registrations for GEICO DIRECT at USPTO.

Accordingly, the Panel is satisfied that all thirty-four domain names are confusingly similar to the trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has shown prima facie that Respondent lacks rights and legitimate interests in the Disputed Domain Names.

Respondent has, by failing to respond, not rebutted Complainant’s allegations and has shown no rights or legitimate interest in any of the thirty-four domain names:

C. Registered and Used in Bad Faith

The Panel finds that Respondent was aware of the GEICO Marks at the time that the Disputed Domain Names were registered. Complainant advertises widely and, considering the inclusion of the term “insurance” in most of the Disputed Domain Names, it is inconceivable that Complainant’s business was not known to Respondent. The Panel accepts that Respondent registered the Disputed Domain Names in bad faith.

Respondent, by use of the Disputed Domain Names, redirects web users away from Complainant’s website to its own 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:

be transferred from Respondent to Complainant. The Panel therefore requests the Registrar to transfer the said domain names to Complainant.

Isabel Davies
Sole Panelist

Dated: December 29, 2005

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URL: http://www.worldlii.org/int/other/GENDND/2005/311.html

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