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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Registration Private, Domains by Proxy, LLC / Elite Domains, Elite Domains LLC

Case No. D2020-1334

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“US”) / Elite Domains, Elite Domains LLC, US.

2. The Domain Name and Registrar

The disputed domain name <petplano.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2020, 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 May 29, 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 June 1, 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 June 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020.

The Center appointed Leon Trakman as the sole panelist in this matter on June 30, 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, Pet Plan Ltd (“Pet Plan”) provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. These include the following PETPLAN trademarks: PETPLAN registered with United States Patent and Trademark Office (“USPTO”) (Registration Number 3161569, registered on October 24, 2006); PETPLAN and Design registered with USPTO (Registration Number 4524285, registered on May 6, 2014); PETPLAN registered with Canadian Intellectual Property Office (“CIPO”) (Registration Number TMA463628, registered on September 27, 1996); PETPLAN registered with CIPO (Registration Number TMA592526, registered on October 17, 2003); PETPLAN registered with United Kingdom Intellectual Property Office (“UKIPO”) (Registration Number 2052294, registered on January 17, 1997); PETPLAN registered with UKIPO (Registration Number 2222270, registered on April 6, 2001); PETPLAN registered in the European Union Trade Mark (“EUTM”) (Registration Number 000328492, registered on October 16, 2000); PETPLAN EUTM (Registration Number 001511054, registered on December 18, 2001).

The disputed domain name was registered on April 30, 2017, and it resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that: 1. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, contrary to Policy, (paragraph 4(a)(i)) and Rules (paragraphs 3(b)(viii), (b)(ix)(1)); 2. The Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to Policy (paragraph 4(a)(ii) and Rules (paragraph 3(b)(ix)(2)); and 3. The disputed domain name was registered and is being used in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b) and Rules (paragraph 3(b)(ix)(3)).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the PETPLAN trademarks identified above. Registering those trademarks constitutes evidence that it has satisfied the threshold requirements of having trademark rights for the purpose of establishing its standing to file a UDRP claim. “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1).

The Panel holds that the disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark.

The disputed domain name reproduces the Complainant’s trademark with the addition of the letter “o” to the term “petplan”. UDRP panels have repeatedly held that the addition, omission or alteration of punctuation and letters within a disputed domain name is insufficient to distinguish it from the Complainant’s name or trademark. (See, e.g., Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259; Pet Plan Ltd v. Graham Walsh, Isnup.com, WIPO Case No. D2020-0541.

The addition of the letter “o” to the Complainant’s trademark is an illustration of “typo-squatting” and evidences the confusingly similarity between the disputed domain name and the Complainant’s trademark. See, e.g., Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No. D2015-2042. See also WIPO Overview 3.0at section 1.9,which states that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

Regarding the use of the generic Top-Level Domain (“gTLD”) “.com”, the inclusion of gTLDs in domain names, such as “.com”, constitute standard registration requirements and therefore should be disregarded in determining whether a disputed domain name is confusingly similar to the Complainant’s trademark. (See WIPO Overview 3.0 at section 1.11.1).

The Panel therefore holds that disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted the Complainant’s prima facie case. See WIPO Overview 3.0 at section 2.1.

The Complainant has its trademark registered with the USPTO, CIPO, UKIPO and the EUIPO, and provides prima facie evidence of the validity and its ownership of the trademark, claiming that the Respondent lacks rights or legitimate interests in a name corresponding to the disputed domain name.

The Complainant has provided reasonable evidence that it has not authorized the Respondent to use its trademark. The Respondent is not sponsored by or otherwise affiliated with the Complainant. The Complainant has not granted the Respondent permission, whether directly or through an agent, to use the Complainant’s trademarks.

The Respondent is also not commonly known by the disputed domain name, contrary to the Policy, paragraph 4(c)(ii). See also World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. The Registrant’s name does not resemble the disputed domain name. Nor has the Respondent acquired authorization to use the disputed domain name by any other legitimate means that complies with Policy 4(c)(ii). See further Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

There is also no evidence adduced that the disputed domain name is being used to make a bona fide offering of any products or services. It resolves to a parking page and was previously offered for sale. See, Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev, WIPO Case No. D2014-1612; Kabushiki Kaisha ASICS v. SC Gaticonstruct, WIPO Case No. DRO2008-0010.

Based on the foregoing, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel determines that the Respondent registered the disputed domain name in bad faith.

The fact that the Respondent registered the disputed domain name on April 30, 2017, years after the Complainant registered its internationally known trademark with the UKIPO in 1997 and with the USPTO in 2006, does not alone establish that the Respondent’s registration was in bad faith. Bad faith registration arises from these related facts. Firstly, the Respondent was likely well aware, in registering the dispute domain name that was confusingly similar domain name to the Claimant’s trademark, of the Complainant’s business, in providing pet insurance for over 40 years, with licenses to do so in numerous countries, including Canada and the US. Secondly, the fact that the Respondent “registered a well-known trademark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911. Thirdly, the fact that the Respondent used a privacy service to hide its identity is further evidence of bad faith registration in the circumstances of this case. As noted in WIPO Overview 3.0: “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.” at section 3.6. See too Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni, WIPO Case No. D2003-0230.

The Respondent is also using the disputed domain name in bad faith. Firstly, it resolved to a website where the disputed domain name was offered for sale in excess of the respondent’s likely out-of-pocket costs. Secondly, it currently resolves to a parking page. See, Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited, WIPO Case No. D2014-1935; Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, WIPO Case No. D2016-2514. Thirdly, the Respondent is likely intending to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. See WIPO Overview 3.0 at section 3.1.4. Lastly, and alternatively, the Respondent is likely attempting to induce the Complainant to buy the disputed domain name, or to sell it a third party with that same purpose or intending to establish a pet insurance business in competition with the Complainant. See, Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740. See also, WIPO Overview 3.0 at section 3.1.1.

In addition, the Respondent’s default in the circumstances identified above, lends “strong support for a determination of ‘bad faith’ registration and use”. Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330. See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.

Furthermore, the Panel notes the nature of the disputed domain name, containing a typo of the Complainant’s widely-known trademark, which affirms a finding of bad faith. See WIPO Overview 3.2.1.

For the foregoing reasons, the Panel determines that the Respondent registered and is using the disputed domain name 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 <petplano.com> be transferred to the Complainant.

Leon Trakman
Sole Panelist
Date: July 8, 2020

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