WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd. v. Omkar Nalamwar / PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER

Case No. D2015-0412

1. The Parties

The Complainant is Pet Plan Ltd. of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Omkar Nalamwar of Irvine, California, United States of America (“US”); PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER of Brea, Canada.

2. The Domain Name and Registrar

The disputed domain name <petplanfinder.com> is registered with New Dream Network, LLC dba DreamHost.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2015. On March 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 10, 2015.

The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2015.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 15, 2015. 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 Complainant, Pet Plan Ltd (“Pet Plan”), provides pet insurance for domestic pets in the UK. The company offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals. In addition, it offers insurance to pet care professionals and a pet finding service. The company was founded in 1976 and is based in Brentford, UK. It is now a subsidiary of Allianz Insurance PLC, a member of the Allianz Global Group.

The disputed domain name is not in use.

The disputed domain name was registered on April 2, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the PETPLAN trademarks and has registered the trademarks in the US, Canada and the UK.

The Complainant states that the trademark PETPLAN is a distinctive and well-known trademark used by the Complainant in connection with pet insurance services for well over 15 years. The Complainant states that it is the number one pet insurance provider and has won numerous awards including the “Your Dog Best Pet Insurance” and “Your Cat Best Pet Insurance” winner from 2008 – 2013 and most recently the “Consumer Moneyfacts Awards – Highly Commended” in 2014.

The Complaint states that the disputed domain name is confusingly similar to the trademark PETPLAN. It is stated in the Complaint that in creating the disputed domain name, the Respondent has merely added the generic, descriptive term “finder” to the Complainant’s PETPLAN trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. The Complainant states that the fact that such term is closely linked and associated with the Complainant’s trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainants trademark.

The Complainant states that the Respondent does not have rights or legitimate interests over the disputed domain name based on the following:

- the Respondent is not sponsored by or affiliated with the Complainant in any way.

- the Complainant has not given the Respondent permission to use the Complainant’s marks in any manner, including in a domain name,

- To the Complainant knowledge, the Respondent has not been commonly known by the disputed domain name,

- The disputed domain name fails to resolve to active content, and a notice at the disputed domain names website states, “This webpage is not available.” The Respondent has thus failed to make an active use of the disputed domain name, which indicates a lack of rights and legitimate interests under Policy paragraph 4(a)(ii).

- the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services.

With respect to bad faith registration, the Complainant states that the Respondent registered the disputed domain name on April 2, 2013, which is well after the Complainant registered its PETPLAN trademark with the UK Intellectual Property Office (UK IPO) and the United States Patent and Trademark Office (USPTO) in 1997 and 2006, respectively. The fact that the Respondent registered the disputed domain name well after the Complainant and its PETPLAN trademark became famous and well-known demonstrates that the Respondent registered the disputed domain name in bad faith.

The Complainant also argues that the PETPLAN brand is known internationally because the Complainant has marketed and sold services using the Complainant’s PETPLAN trademark since the initial filing date of 1997. Based on this continuous use, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the disputed domain name was registered.

In addition, the Complaint states that the disputed domain name does not resolve to an active website, which constitutes “passive holding” in bad faith because the disputed domain name incorporates the Complainant’s PETPLAN mark and merely adds the term “finder,” which closely relates to the Complainant.

The Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding. Finally, according to the Complaint, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which previous UDRP panels have held serves as further evidence of bad faith registration and use.

Finally, the Complaint states that on balance of all the mentioned facts, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence each of the following UDRP elements:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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

To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The Complainant demonstrated its rights in the PET PLAN trademark by submission of copies of multiple trademark registrations.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s PET PLAN trademark. The test for confusing similarity should be a comparison between the mark and the domain name. To satisfy this test, the trademark would need to be recognizable within the domain name, with adding common, dictionary, descriptive, or negative terms […] typically being insufficient to prevent threshold Internet user confusion.

The Panel finds that Respondent’s addition of the term “finder” fails to distinguish the disputed domain name from Complainant’s mark. See The American Automobile Association, Inc. v. Samuel Yudin, WIPO Case No. D2011-2322 (finding that the generic term “finder” does not change the confusing similarity).

It is also well established that adding the generic Top-Level Domain (gTLD) “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.

Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the disputed domain name is confusingly similar to the trademark PET PLAN in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that:

“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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Complainant is required to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once that has been established, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).

It is not in dispute that the Complainant did not license or otherwise authorize the Respondent to use the trademark PET PLAN and there is no evidence that the Respondent is known by the name “Pet Plan” or “Pet Plan Finder”. Neither is there any evidence of a bona fide offering of goods or services by the Respondent following the registration of the disputed domain name. In fact, the Complainant stated that there was a passive use of the disputed domain name. There is therefore a prima facie case of a lack of rights or legitimate interests which the Respondent has not rebutted by way of a Response.

In the circumstances and in accordance with paragraph 15(a) of the Rules, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Consequently, the Panel finds that the paragraph 4(a)(ii) the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 Policy requires the Complainant to demonstrate not only registration but also use in bad faith of a domain name. In the present case, it is undisputed that the disputed domain name has never been connected to an active website. The consensus view of UDRP panelists is that passive holding of a disputed domain name may in certain circumstances be consistent with a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See paragraph 3.2 of the WIPO Overview 2.0).

The following circumstances are taken into account:

- The Complainant stated that the trademark PETPLAN is a distinctive and well-known trademark used in connection with pet insurance for well over 15 years. The Respondent has not denied these assertions. The disputed domain name was registered in the year 2013, and in these two years no use was provided for the disputed domain name.

- There is no plausible explanation for the Respondent’s registration of the disputed domain name containing the Complainant’s trademark in its entirety.

- The disputed domain name incorporates the Complainant PETPLAN trademark and merely adds the term “finder”, which is a generic term.

- The disputed domain name does not resolve to an active website, which constitutes “passive holding” in bad faith because there is no conceivable use of the disputed domain name for a website by the Respondent that would be legitimate.

- Failure to respond to a cease-and-desist letter is also an indication of bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330. Here the Complainant stated that the letter in Annex 8 to the Complaint was sent to Respondent with no answer.

- The Respondent, at the time of initial filing of the Complaint was employing a privacy service to hide its identity. This forced the Complainant to amend the Complaint at the request of the Center. Use of a privacy service, in the view of this Panel, is further evidence of bad faith registration and use. See Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc and Sabatino Andreoni, WIPO Case No. D2003-0230.

In light of all this evidence, the Panel concludes that the disputed domain names was registered and is used in bad faith.

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 <petplanfinder.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: April 29, 2015