In a recent decision under the Uniform Domain Name Dispute Resolution Policy, (the UDRP) a single-member Panel ruled that the registration and use of a disputed domain name incorporating a trade mark without any reasonable justification was sufficiently strong evidence of bad faith.
As the Panel duly noted, the Complainant, Government Employees Insurance Company, often known as GEICO, was no stranger to the UDRP process, having had to initiate proceedings on a regular basis in order to protect registered trade mark rights in its acronym, surprisingly popular with registrants.
The Respondent, a certain Michael Gonzalez from Florida, registered two Domain Names, ‹geicohosting.com› and ‹geicohosting.net› on 28 March 2009 and 14 January 2011 respectively. The outcome of this proceeding was less predictable for the former, which resolved to a website promoting the Respondent's alleged web hosting services but yet was riddled with typographical errors, incorrect contact details and other unprofessional anomalies. The latter pointed towards a sponsored links page.
The Complainant filed a Complaint with the World Intellectual Property Organization (WIPO) on 5 July 2011. To be successful in a UDRP procedure, the burden of proof is incumbent on the Complainant, who must provide evidence that:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
In respect of the first limb of the UDRP, the Complainant asserted that it had had registered trade mark rights in the term GEICO since 1964, and common law rights going back to 1936. It further contended that the disputed Domain Names were confusingly similar to the mark GEICO. These two arguments were readily accepted by the Panel, who noted that the establishment of trade mark rights had long preceded registration of the Domain Names, whose dominant and identifying feature was the mark GEICO, incorporated in its entirety. Thus the addition of "hosting", a non-source indentifying term, was immaterial and did not obviate the likelihood of consumer confusion.
As for the second limb, it was submitted that the Respondent was in no way associated with the Complainant, and had not acquired any license or prior consent. It was further alleged that the Respondent was not commonly known under the aforementioned mark, and that available evidence strongly implied that the Respondent could not be pursuing any legitimate or bona fide interest. Remarking that the burden of proof was incumbent upon the Complainant, and that the mark GEICO was exclusively associated with the Complainant's insurance services, the Panel agreed that the Respondent had no legitimate reason to make use of the Domain Names in connection with both the website displaying sponsored links and the webhosting site. In the Panel's view, the latter's unprofessional nature belied any possible evidence of serious activity likely to fall into the scope of a "bona fide offering of goods or services".
The last limb proved to be more difficult. As the Panel noted, the Complainant had easily established bad faith in relation to the Domain Name which was pointing to a website with links to competing insurance services. However, the unprofessional content of the website to which the second Domain Name resolved did not yield any substantial evidence of bad faith use. Indeed, the Complainant based its allegation of bad faith on a pattern of bad faith conduct, arising from the existence of two Domain Names incorporating the trade mark in its entirety, the first of which clearly evidenced commercial interest.
Confronted with such evidentiary difficulties, the Panel proved to be particularly clement and considered that bad faith may arise from "the very domain name itself", even if none of the four circumstances listed under paragraph 4(b) of the UDRP as examples of bad faith registration and use were established in the case at hand. The Panel laid emphasis on the distinctive nature of the acronym in question, which was a coined term associated with the Complainant's services and products.
In the Panel's opinion, three conditions must be fulfilled in order to prove that the Respondent registered and was using the Domain Name in bad faith: the Complainant must evidence that there was no reason for the Respondent to use the Domain Name, that there was no relationship between the Parties and finally no possible connection between the Respondent's business on the website and the mark GEICO.
In the present case, the Panel held that all three conditions were fulfilled, and concluded that the Respondent's intention was to create a false sense of origin or sponsorship.
This case illustrates the specific burden of proof under the UDRP and its flexible nature, as it explicitly provides that the circumstances evidencing bad faith under paragraph 4(b) are "in particular but without limitation" and thus not the sole means of establishing the third limb. This detail was paramount to the success of the Complaint in this instance.
The decision is available at: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1130