WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Ken Leombruno/Benefits Arizona LLC

Case No. D2020-1206

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Ken Leombruno/Benefits Arizona LLC, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain name names <azpetplan.com> and <petplanaz.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2020 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 May 26, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. Two emails were received from Respondent on June 11, 2020, and July 1, 2020, however, no formal Response was filed with the Center.

The Center appointed Marilena Comanescu as the sole panelist in this matter on July 6, 2020. 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, incorporated in the United Kingdom in 1976, is currently part of the worldwide financial service provider Allianz Global Group. The Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees.

The Complainant alleges its mark PETPLAN has won numerous awards and has become distinctive and well-known due to its more than 40 years’ use and significant investments in advertisement and marketing.

Previous UDRP panels have found that the Complainant’s PETPLAN trademark is well-known worldwide in its industry. See Pet Plan Ltd V. Contact Privacy Inc. Customer 1241410113 / Paul Richmond, 808paul Llc, WIPO Case No. D2017-2259 and cases cited therein.

The Complainant holds trademark registrations for or including PETPLAN, such as the following:

- the United States stylized trademark registration No. 3161569 filed on August 26, 2004 and registered on October 24, 2006, for goods and services in International Classes 16, 36, and 41; and

- the European Union stylized trademark registration No. 000328492 filed on July 11, 1996 and registered on October 16, 2000 for services in International Class 36.

The Complainant’s main website is available at “www.petplan.co.uk” and it was registered in 1996.

The disputed domain names <azpetplan.com> and <petplanaz.com> were both registered on September 24, 2008 and, at the time of filing the Complaint, according to the evidence provided in Annex 3 to Complaint, they were used in connection with pay-per-click pages (“PPC”) with sponsored links related to, inter alia, goods and services similar to those offered by the Complainant.

In March 2020, the Complainant sent several letters to the Respondent through the privacy service provider registered in the WhoIs, asking to cease from using the disputed domain names and to transfer them to it. No reaction was received.

The Respondent submitted two communications to the Center on June 11, 2020, respectively on July 1, 2020. In the first communication the Respondent claims the disputed domain names are not used for commercial purposes, and that it wishes to transfer the disputed domain names to Complainant in exchange of the amount of USD 465.41 representing the costs inccured with the disputed domain names and in the second communication, the Respondent claims it would transfer the disputed domain names free of charge if the case will be dismissed. The Complainant decided to continue the administrative proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its PETPLAN trademark is well-known and distinctive worldwide; that the disputed domain names are confusingly similar to its trademark PETPLAN as they incorporate such mark together with the term “az”; that the Respondent has no rights or legitimate interests in the disputed domain names; and, that the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names to it.

B. Respondent

The Respondent reacted as above, but did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the abscence of a Response on merits, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the PETPLAN trademark.

The disputed domain names <azpetplan.com> and <petplanaz.com> incorporate the Complainant’s trademark PETPLAN with the term “az” placed before, and respectively after, the mark. However, such alterations do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain names.

Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not avoid a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the theWIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark PETPLAN, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark PETPLAN, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “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”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain names.

The Respondent has used the disputed domain names in connection with a parking page displaying PPC links, promoting goods and services similar to those offered by the Complainant. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for PETPLAN for four decades. Due to its extensive use and marketing, the PETPLAN trademark has become distinctive and enjoys significant reputation in its field of activity.

The disputed domain names were created well after the Complainant’s mark had been in use and incorporate the Complainant’s mark in its entirety. Furthermore, according to its trade name, the Respondent seems to be involved in the insurance business, the same industry as the Complainant.

For the above, the Panel finds that the disputed domain names were registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing the Complaint, the disputed domain names resolved to a web page providing links to goods and services similar to those offered by the Complainant.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

The Panel finds that the Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.

Further, the Respondent registered the disputed domain names under a privacy shield, did not respond to Complainant’s cease and desist letters prior to commencing these proceedings, nor substantively to the present Complaint (except to express an intention to relinquish the disputed domain names).

In its communications sent to the Center during the administrative proceedings, the Respondent does not contest Complainant’s allegations, but initially sought money for costs incurred with the disputed domain names, and following Complainant’s refusal offered to transfer the disputed domain names to the Complainant in exchange for the case being dismissed. These further acts, together with all the other elements in this case, constitute, in the eyes of this Panel, further evidence of bad faith behaviour. See section 3.2.1 of theWIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 names <azpetplan.com> and <petplanaz.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: July 20, 2020