WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd. v. Nigel Barnes

Case No. D2016-0029

1. The Parties

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

The Respondent is Nigel Barnes of London, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names, <pet-plans.com> (the “First Domain Name”) and <thepetplancompany.com> (the “Second Domain Name”) (together the “Domain Names”), are registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2016.

The Center appointed Tony Willoughby as the sole panelist in this matter on February 9, 2016. 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 is a leading provider of pet insurance based in London, United Kingdom. The business was founded in 1976 and trades under the name “Pet Plan”, which is its primary trade mark.

The Complainant is the registered proprietor of a number of trade mark registrations covering its PETPLAN trade mark including by way of example United Kingdom Trade Mark Registration No. 2222270 registered April 6, 2001, (filed February 14, 2000), PETPLAN (word) for a variety of goods and services in classes 6, 16, 25, 35, 36, 41, 42 and 45 includinginsurance services in class 36.

The Complainant’s primary websites are connected to its domain names <petplan.co.uk> (registered pre‑August, 1996) and <petplan.com> (registered March 11, 1996).

Over the period 2008-2014 the Complainant won a large number of awards for the quality of its services including in 2010 “Which? Best Buy Pet Insurance” in respect of its Supreme and Supercat Insurance policies.

The First Domain Name was registered on September 20, 2015, and is connected to a website offering payment plan services to pet owners to cover the cost of cremations and related care services. The trading name/brand appearing prominently at the head of the homepage is “PET-PLANS.com”. The Second Domain Name was registered on December 13, 2015, and is connected to the same website.

The homepage for the Respondent’s website features the following explanation as to why customers should use the Respondent’s services:

“Why chose pet-plans.com? it’s simple, over 9 million people own dogs that’s around 24% of households, over 7.9 million own cats (18% of households), you can pay from as little as £1 per month to start your companions personalised payment plan. Did you know that a pet cremation can cost up to £569?”

The Respondent’s homepage also features a form to be completed by the visitor and that form is headed “Pet Plan Quotation”.

The Complainant wrote to the Respondent on November 19, 2015, drawing the Respondent’s attention to its rights and seeking inter alia transfer of the First Domain Name. No reply having been received the Complainant followed up with a “chaser” on November 30, 2015 and yet another “chaser” on December 11, 2015, with a covering email headed “Third & Final Notice”.

On December 11, 2015, the Respondent emailed the Complainant; “Would you like to purchase the domain name, we are looking to accept offers in the region of GBP 10,000.” On December 16, 2015, the Complainant responded saying that it was prepared to refund the Respondent his out-of-pocket expenses in exchange for transfer of the First Domain Name, apparently unaware that three days earlier on December 13, 2015, the Respondent had registered the Second Domain Name. On December 17, 2015, the Respondent responded raising his price to “around GBP 15,000”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Names; and that the Domain Names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

The First Domain Name comprises the words “pet” and “plans” in hyphenated form followed by the generic Top-Level Domain (“gTLD”) identifier. The Second Domain Name comprises the words “the”, “pet”, “plan” and “company” followed by the gTLD identifier. The Complainant’s trade mark is PETPLAN.

The Complainant’s trade mark is readily recognizable in the Domain Names and in neither case does the addition of the gTLD identifier in any way dilute the distinctiveness of the Complainant’s trade mark.

The Panel finds that the Domain Names are confusingly similar to the Complainant’s PETPLAN trade mark.

C. Rights or Legitimate Interests

While it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, in the case of the second element (paragraph 4(a)(ii) of the Policy) it is generally sufficient in the first instance for the Complainant to make out a prima facie case calling for an answer from the Respondent. As this Panel explained in Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121,

“While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”

The Complainant contends that the Respondent cannot have been unaware of the existence of the Complainant when he commenced business, the Complainant being one of the market leaders in the pet insurance business in the United Kingdom. The Complainant contends that the Respondent selected the name “PET-PLANS.com” (both as a trading name and as a domain name) knowing and intending that Internet users would be likely to be confused into believing that his business was the Complainant’s business or was in some way associated with the Complainant’s business. The use of the Complainant’s trade mark in relation to the quotation form on the Respondent’s website strengthens the case against the Respondent.

The Complainant contends that any doubt as to the Respondent’s bona fides is removed by the Second Domain Name, which precisely identifies the Complainant and which was registered following receipt by the Respondent of the Complainant’s cease-and-desist letters (see section 4 above).

The Complainant contends that such registration and use of the Domain Names cannot give rise to any rights or legitimate interests in respect of the Domain Names in the hands of the Respondent.

The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent. The Respondent has chosen not to respond.

While “Petplan” and “Pet-Plans” are arguably names suggestive of the business in which both Parties are engaged, the evidence of secondary meaning filed by the Complainant in respect of its trade mark is overwhelming. The Panel cannot conceive of any basis upon which the Respondent could be said to have rights or legitimate interests in respect of the Domain Names.

In light of the above and in the absence of any answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

D. Registered and Used in Bad Faith

On the assumption that the Respondent is running a genuine business, he embarked on it knowing that he had selected a name very close to that in use by what appears to be one of the leading players in the industry in the United Kingdom. In the Panel’s view the Respondent will have known that there was a high risk of confusion and that any confusion would be likely to enure to his benefit. In going on to register the Second Domain Name, which precisely identifies the Complainant, the Respondent made his intentions clear.

The Complainant’s primary contention is that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which provides:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 Panel agrees that the circumstances set out and referred to in sections 4 and 6C above certainly support that contention as a strong possibility.

However, the Panel has no information upon which to assess whether or not the Respondent is in fact operating a pet insurance business. The email exchanges between the Parties as set out in section 4 above give rise to another possibility, namely that the Respondent registered the Domain Names with a view to selling them to the Complainant at a profit. It is to be noted that in the course of those email exchanges while the Respondent was demanding from the Complainant GBP 10,000 (raised to GBP 15,000) for the First Domain Name he was registering the Second Domain Name, a domain name likely to be at least as objectionable to the Complainant as the First Domain Name.

The Panel finds that if the Respondent’s business is not a genuine business, it is very possible that the Respondent’s registration and use of the Domain Names falls foul of paragraph 4(b)(i) of the Policy, which provides:

“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.”

On either of the above bases the Panel finds on the balance of probabilities on the evidence before him and in the absence of any explanation from the Respondent that the Domain Names were registered and are being 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 Domain Names, <pet-plans.com> and <thepetplancompany.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: February 10, 2016