WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Jesse Patterson

Case No. D2018-0820

1. The Parties

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.

Respondent is Jesse Patterson of King, North Carolina, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <perfectpetplan.com> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, 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 Complainant on April 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On April 17, 2018, Complainant filed an amended Complaint.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. On May 8, 2018, the Center received an informal email communication from Respondent and on May 10, 2018, Complainant submitted a request to suspend the administrative proceeding. The administrative proceeding was formally suspended on May 11, 2018. On June 11, 2018, the administrative proceeding was reinstituted.

The Center appointed Roberto Bianchi as the sole panelist in this matter on June 22, 2018. 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, founded in 1976 and based in Brentford, United Kingdom, provides insurance services for domestic and exotic pets. Complainant operates in the United Kingdom and other countries through various licensees, including in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. Complainant is a subsidiary of Allianz Insurance plc and part of the Allianz Global Group, one of the world's leading financial services providers.

Complainant owns trademark registrations for PETPLAN and PET PLAN in various jurisdictions. For the purposes of this proceeding, it suffices to list the following:

PET PLAN, Canada Registration No. TMA463628, registered on September 27, 1996, filed on July 31, 1989, covering "Providing insurance broking services in connection with health insurance for domestic animals", in International Class 36, (renewed).

PETPLAN, United Kingdom Registration No. UK00002052294, registered on January 17, 1997, filed on January 19, 1996, covering "Insurance brokerage relating to pets", in International Class 36.

PET PLAN, United States Registration No. 3161569, registered on October 24, 2006, filed on August 26, 2004, covering "Printed materials, namely books, manuals, booklets, guide books, leaflets, posters, and instructional and teaching materials all relating to animal welfare and education, pet insurance, and veterinary practice management", in International Class16; "Insurance services, namely, animal insurance administration and insurance brokerage; administration of insurance contracts; consulting in the field of insurance [and credit card services]; underwriting services; charitable fund raising, financial administration of charitable foundations and consulting services related thereto", in International Class 36; "Providing education and training in the field of animal welfare and pet insurance by arranging and conducting seminars, conferences, exhibitions and conventions; organizing and conducting sporting and recreational events; and publishing printed and audio visual materials and film, video and audio for broadcast transmission in advice and assistance for these services", in International Class 41.

PETPLAN, United States Registration No. 4524285, registered on May 6, 2014, filed on January 8, 2013, covering "Dog and pet identification tags of metal", in International Class 6; "Printed materials, namely, books, manuals, booklets, guide books, leaflets, posters, newsletters, journals, magazines, periodicals and books in the field of animal health, animal welfare, pet care and pet health insurance; instructional and teaching materials, namely, books, manuals, booklets, guide books, leaflets, posters, newsletters, journals, magazines, periodicals and books in the field of animal health, pet care and pet insurance", in International Class 16; "Dog and pet leashes and leads; dog and pet harnesses; dog and pet collars; dog and pet apparel", in International Class 18, "Business administration services; advertising, marketing and promotional services; provision of information relating to exhibitions and displays for commercial and/or advertising purposes by electronic means; charitable services, namely, organizing volunteer programs and community service projects in the area of animal welfare", in International Class 35; "Insurance services, namely, pet health insurance; financial services provided in connection with insurance and credit services, namely, pet health insurance; credit and loan services for consumers; insurance brokerage; underwriting services in the area of pet health insurance; provision of information about insurance and financial services by electronic means; charitable fund raising services; administration of insurance contracts; administration of credit arrangements; advice and assistance in respect of all the aforementioned services", in International Class 36, "Providing education, namely, education classes, seminars and courses relating to animal welfare and pet insurance and training in the field of animal welfare and pet insurance; Providing education and training in the field of animal welfare and pet insurance by arranging and conducting seminars, conferences, exhibitions and conventions; Organizing, arranging and conducting of sporting and recreational events; publication of printed and audiovisual material; production of film, video and audio for broadcast transmission and public performance; provision of entertainment information by electronic means; provision of information relating to educational conferences and congresses by electronic means; provision of information relating to exhibitions and displays for educational and/or cultural purposes by electronic means; advice and assistance in respect of all the aforementioned services", in International Class 41, and "Consultation and advisory services relating to animal health and animal care; veterinary advice and assistance; professional advice and assistance in respect of the aforementioned services ", in International Class 44.

Complainant owns the <petplan.co.uk> and <petplan.com> domain names, and operates the "www.petplan.co.uk" and "www.petplan.com" websites.

The disputed domain name was registered on December 27, 2017, and resolves to a website with no content.

5. Parties' Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant's PETPLAN trademarks. By virtue of its various registrations, Complainant is the owner of the PETPLAN marks, which the disputed domain name captures in its entirety, and simply adding the generic term "perfect".

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant's trademark registrations in various jurisdictions are prima facie evidence of the validity of the term "PETPLAN" as a trademark, and of Complainant's exclusive right to use it in commerce.

Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission, license or authorization to use Complainant's trademarks in any manner, including in domain names. The pertinent WhoIs information identifies the disputed domain name registrant as "Jesse Patterson". There is no evidence suggesting that Respondent is commonly known by the disputed domain name. Furthermore, at the time of filing the Complaint, Respondent was using a privacy service, which past UDRP panels have also found to equate to a lack of legitimate interest.

Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. Respondent has failed to use the disputed domain name for a website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name.

Respondent registered the disputed domain name significantly after Complainant filed for registration of its PETPLAN trademark with the United Kingdom in 1997, the European Union in 2000, and the United States in 2006.

The disputed domain name was registered and is being used in bad faith. At the time of registration of the disputed domain name, Respondent knew or should have known of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. Respondent registered the disputed domain name well after Complainant registered its PETPLAN trademark and this trademark became famous and well known, which demonstrates that Respondent registered the domain in bad faith. Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 1997, well before Respondent's registration of the disputed domain name on December 27, 2017. In addition to the numerous trademarks filed in connection with Complainant's business, Complainant has been in business for over 35 years, is licensed in numerous countries and is consistently ranked as the number one pet insurance provider in the United Kingdom. In addition, as a pioneer in its field, Complainant has won numerous awards as an insurer for pets, which demonstrates Complainant's fame. Further, performing searches across a number of Internet search engines for "perfect petplan" returns multiple links referencing Complainant and its business.

While constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's marks, and thus having registered the domain in bad faith, where the complainant's mark is well known and the circumstances support such a finding, as is the case here. The disputed domain name is confusingly similar to Complainant's trademarks, and Respondent has made no use of the disputed domain name, factors that should be duly considered in assessing bad faith registration and use.

The disputed domain name currently resolves to an inactive site and is not being used. Past UDRP panels have noted that the word bad faith "use" in the context of Policy, paragraph 4(a)(iii) does not require a positive act on the part of the respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). In this case, the disputed domain name is confusingly similar to Complainant's trademarks, and Respondent has made no use of the disputed domain name, factors that should be duly considered in assessing bad faith registration and use.

On January 17, 2018, Complainant tried to contact Respondent through cease-and-desist letters, advising that the unauthorized use of the PETPLAN trademark in the disputed domain name violated Complainant's rights in said trademark and requested voluntary transfer of the same. Respondent replied to Complainant's final notice and indicated Respondent wished to speak with someone of Complainant via telephone. Complainant's representative made several unsuccessful attempts to reach Respondent via telephone. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file this Complaint.

At the time of initial filing of the Complaint, Respondent had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. Finally, upon receiving the cease-and-desist letters from Complainant's representative, Respondent could have used this opportunity to justify its proposed good faith use of the disputed domain name but chose not to. In conclusion, it is more likely than not that Respondent knew of and targeted Complainant's trademark.

B. Respondent

Respondent did not reply to the Complaint. On May 8, 2018, following the notification of the Complaint and the commencement of the proceeding, Respondent sent the Center an email reading as follows:

"Hello this is Jesse Patterson I got a notice from you guys apparently someone thinks I'm using a domain that is too close to theirs and wants me to transfer the ownership. When I spoke with you a month ago you said that I could find it in my email but the email listed on this notice Was never set up so I have not received any emails from you. To my understanding I need to transfer this domain to whoever submitted the complaint but I don't know who I'm supposed to contact to do so. Please get back with me at […]@gmail.com Or call me at […]"

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from several official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the PETPLAN and PET PLAN trademarks. See section 4 above.

The Panel notes that the disputed domain name incorporates the PETPLAN mark in its entirety, just adding the dictionary term "perfect" and the generic Top-Level Domain ("gTLD") ".com". It is well established that such kind of additions are inapt to distinguish a domain name from the mark it incorporates. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"); Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014, relating to <revlonperfect1.com>, <revlonperfect1.info>, <revlonperfect1.net> and <revlonperfect1.org> ("The addition of a laudatory or descriptive term does not serve to distinguish the disputed domain names from the Complainant's trademark […]"). See, for example, Revlon Consumer Products Corporation v. Private Whois Service, WIPO Case No. D2010-1207.")

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark PETPLAN.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission, license or authorization to use Complainant's trademarks in any manner, including in domain names. Complainant also contends that there is no evidence suggesting that Respondent is commonly known by the disputed domain name. Lastly, Complainant says that Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. Thus, Respondent has failed to use the disputed domain name for a website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name.

In the view of the Panel, the available evidence supports Complainant's contentions. First, nothing in the record indicates that Respondent was ever authorized to use Complainant's mark in any way, including in a domain name. Second, according to the relevant WhoIs data, the name of the registrant of the disputed domain name is Jesse Patterson, a circumstance that, failing any contrary evidence, discards the application of Policy, paragraph 4(c)(ii). Third, Complainant has shown that the website at the disputed domain name merely displays a text stating, "Wix.com. Looks Like This Domain Isn't Connected To A Website Yet!" and showing instructions to subscribe to this service provider and to activate a website at the disputed domain name. This excludes the application of Policy, paragraph 4(c)(i) (use in connection with a bona fide offering of goods or services, and Policy, paragraph 4(c)(iii) (fair or legitimate noncommercial use). In sum, Complainant succeeded in making a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain name.

Noting that Respondent failed to reply to Complainant's cease-and-desist letter and reminders, and to provide the Panel with any evidence indicating that Respondent might have at least some rights or legitimate interests in registering and using the disputed domain name, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 ("While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.")

C. Registered and Used in Bad Faith

The Panel notes that at least two of Complainant's registrations of the PETPLAN mark – in Canada and the United Kingdom – predate the registration of the disputed domain name by over two decades, while two registrations in the United States (the country of residence of Respondent) also were obtained before the registration of the disputed domain name. See section 4 above. Complainant also has shown that at the time of the domain name registration it had already received several awards for its pet insurance services. Together with the addition in the disputed domain name of the laudatory term "perfect" to Complainant's mark, these facts lead the Panel to infer that Respondent, more likely than not, knew of, and targeted Complainant and its pet insurance services at the time of registering the disputed domain name. In the circumstances of his case, this means that the registration of the disputed domain name was in bad faith.

The Panel also notes that the disputed domain name does not resolve to any active website, a status that apparently has been unchanged since the registration of the disputed domain name.¹ This inactivity does not mean that the disputed domain name is not being used in bad faith. Under the doctrine of passive holding, widely applied by UDRP panels, certain relevant circumstances can reveal that an inactive domain name is being used in bad faith. See WIPO Overview 3.0, section 3.3. ("Can the 'passive holding' or non‑use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.")

In the view of the Panel, several of these circumstances are present in this case: First, Complainant's marks PETPLAN and PET PLAN have been extensively used by Complainant and its licensees in various countries. Second, Complainant's pet insurance and related services have been distinguished with several awards and enjoy considerable reputation. Third, Respondent failed to submit a Response, as it previously had failed to reply to Complainant's cease-and-desist letters. Fourth, in its only communication in this proceeding, (see section 5.B above), Respondent did not even attempt to provide an explanation for its registration and lack of any active use of the disputed domain name.

From all these facts and circumstances, the Panel concludes that the disputed domain name was registered and is 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 disputed domain name <perfectpetplan.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: July 3, 2018

¹ On July 3, 2018, in use of its general powers under Rules paragraph 10(a), the Panel visited the Wayback Machine at the Internet Archive ("www.archive.org"), looking for archived pages of the website at the disputed domain name. The Machine returned a text stating, "Hrm. Wayback Machine doesn't have that page archived."