Administrative panel decision government Employees Insurance Company V. Ronald Grero




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Government Employees Insurance Company v. Ronald Grero

Case No. D2013-2048



1. The Parties

Complainant is Government Employees Insurance Company of Chevy Chase, Maryland, United States of America, represented by Burns & Levinson LLP, United States of America.


Respondent is Ronald Grero, Prestige Automotive Center, of New York, New York, United States of America.


2. The Domain Name and Registrar

The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2013, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 10, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 31, 2013.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on January 10, 2014. 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 paragraph 7 of the Rules.


4. Factual Background

Complainant provides insurance services and has registered several trademarks consisting of GEICO or GEICO in combination with another word, which registrations date back to 1964 with first use dates extending back to 1948 in connection with its insurance services. Respondent registered the disputed domain name in 2009 and, according to archive.org printouts attached to the Complaint, used the disputed domain name for some time in connection with a “GEICO Towing Service” or “GEICO Towing & Emergency Roadside Assistance”. Currently, the disputed domain name resolves to an error page with no content.




5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a well-known insurance company that offers numerous types of insurance services including automobile, motorcycle, homeowners, rental, condominium, flood, mobile home, personal umbrella, and overseas insurance, among others. Complainant attached to the Complaint copies of five United States trademark registrations for various GEICO trademarks, first use dating back to 1948. Complainant asserts that it has over 11 million customers, insures more than 16 million vehicles, has over 27,000 employees, is the fastest-growing auto insurer in the U.S., and maintains a website at “www.geico.com”. Complainant asserts that the disputed domain name consists of Complainant’s mark GEICO plus the generic word “towing”, and that Complainant has not authorized Respondent to use Complainant’s mark in this manner. Complainant asserts that, in 2010, the disputed domain name was used for a website offering towing and related auto services using the GEICO mark. Complainant attached to the Complaint an archive.org printout of such use. Complainant asserts that after counsel for Complainant contacted Respondent about this use, however, Respondent altered the website to generate an inactive “error page”. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith because Respondent had actual or constructive notice of Complainant’s marks at the time the disputed domain name was registered and offered some of the same services as Complainant using a confusingly similar name in order to trade on Complainant’s goodwill.



B. Respondent

Respondent did not reply to Complainant’s contentions.




6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.


Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.


Complainant’s trademark registrations demonstrate that Complainant has rights in the GEICO mark. Complainant also attached to the Complaint a website printout of its official website “www.geico.com”, apparently registered to Complainant since 1995.
The disputed domain name consists of the GEICO mark with the generic word “towing” appended to the end, followed by the “.com” generic top-level domain (“gTLD”). The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Government Employees Insurance Company (GEICO) v. Netsolutions proxy services, WIPO Case No. D2005-1088 (“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’.”); Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004 0488 (“Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”); Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000 1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Nor does the addition of the “.com” gTLD detract from confusing similarity. WRc plc v. W&R Corp., WIPO Case No. D2007 1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark.”); Amedia Limited v. Bkarato, WIPO Case No. D2008-0567 (“The addition of the gTLD in the domain name can be disregarded for these purposes”); Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009 0003 (“The addition of a gTLD and a generic term[] that has an obvious relation to Complainant’s business is insufficient to overcome the confusing similarity that results from using Complainant’s [] mark in the circumstances here presented.”); STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO, NAF Claim No. 1254574. See also Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009-0718 (“Use of the word ‘flys’, which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant's mark.”); Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (“in the first domain name, the word ‘automobile’ refers only to the products to which the corresponding disputed website relates, and in the second domain name the word ‘group’ may refer to Complainant’s different business entities implying that Respondent’s websites ‘www.volvoautomobile.com’ or ‘www.volvogroup.com’ are official websites or are endorsed or belong to Complainant”).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.


“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or



(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by . Rather, Complainant asserts that Respondent is not affiliated with Complainant and is not licensed to use Complainant’s GEICO mark. Further, the submissions attached to the Complaint indicate that Respondent was using the disputed domain name in connection with some of the same services offered by Complainant.
The sale of competitive products using complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). Government Employees Insurance Company (“GEICO”) v. Diamond Point Enterprises Limited, WIPO Case No. D2012-1487 (no rights or legitimate interests where “the Respondent used the Disputed Domain Name for a website with links to competing insurance services”); LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. 636445; Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003 0934. Respondent has not submitted any Response, and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent. See Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):


“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out of pocket costs directly related to the domain name; or

(ii) [Respondent has] registered 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”


There is evidence in this matter that Respondent used the disputed domain name to attract Internet users to Respondent’s website in order to offer commercial services competitive with some of the services offered by Complainant. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy. Government Employees Insurance Company (“GEICO”) v. PPA Media Services, Ryan G. Foo, WIPO Case No. D2012-1486 (finding bad faith in light of, among other things, Respondent’s “use of the Disputed Domain Names in connection with a website offering services that directly compete with that of the Complainant and its default in filing a Response”); Honda Motor Co., Ltd. v. Import 3000, Oscar Alberto Garcia Sandez, WIPO Case No. D2010 0905 (“The use of the disputed domain name for a website that is used to market products of Complainant’s competitors constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith.”); Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483 (“The unauthorized use of Complainant’s trademark to sell competitive products constitutes bad faith under paragraph 4(b)(iv) of the Policy.”); Government Employees Insurance Company (GEICO) v. Netsolutions proxy services, WIPO Case No. D2005-1088 (“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.”); see also Julie Mazzuca d/b/a Meth Lab Cleanup LLC v. Laura Spaulding d/b/a Spaulding Decon, NAF Claim No. 1301289 (finding bad faith under paragraphs 4(b)(iii) and 4(b)(iv) where “the establishment of the website at offering services in competition with Complainant is likely to divert potential customers of Complainant to Respondent”).
Further, “[r]egistration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark may itself be evidence of bad faith registration and use.” Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009-0718. The fact that the disputed domain name no longer resolves to an active website is not a barrier to a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration”).
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.


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 be transferred to Complainant.



Bradley A. Slutsky

Sole Panelist



Date: January 23, 2014



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