WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2017-0018

1. Petitioner

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

2. Domain Holder

The Domain Holder is B. H., of Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <petplan.se>.

This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).

The WIPO Arbitration and Mediation Center (the “Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on November 1, 2017. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on December 4, 2017.

The Center appointed Jon Dal as the sole Arbitrator in this matter on December 21, 2017. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.

4. Factual Background

The Petition for the domain name <petplan.se> was received by the Center on October 10, 2017. The Petitioner elected to have the dispute decided by one arbitrator. The Petitioner did not elect to have the dispute decided as an Accelerated proceeding if the Domain Holder does not respond to the Petition. The Domain Holder did not submit any response.

5. Claim

The Petitioner claims that the domain name shall be transferred to the Petitioner.

6. Parties’ Contentions

A. Petitioner

The Petitioner is the owner of trademark registrations for PETPLAN across numerous jurisdictions, and specifically in the European Union (“EU”) covering Sweden. The Petitioner provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. The Petitioner 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, United Kingdom. It is now a subsidiary of Allianz Insurance plc – one of the largest general insurers in the United Kingdom and part of the Allianz Global Group one of the world’s foremost financial services providers. The Petitioner has continually operated under the Pet Plan name and has used the PETPLAN mark in connection with its pet insurance products.

PETPLAN is a distinctive and well-known mark used by the Petitioner in connection with pet insurance for over 20 years.

The Petitioner has a strong Internet presence through its websites. The Petitioner is the owner of numerous TLDs containing their trademark PETPLAN and different variations. According to the Petitioner’s DNS provider, “www.petplan.co.uk” receives almost 400,000 hits each month and “www.petplan.com” receives an additional 21,000 hits per month.

1. Identical or confusingly similar

The Petitioner is the owner of trademarks in the EU which have legal force in Sweden as early as 1996. The Petitioner is the owner of, i.a., European Union trade mark registration no 000328492 PETPLAN and European Union trade mark registration no 001511054 PETPLAN.

The addition of the country code top-level domain “.SE” does not alleviate the potential confusion between the disputed domain name and the Petitioner’s marks. The addition lacks distinctiveness and is not sufficient to give the disputed domain name an individual meaning. Furthermore, the disputed domain name contains the Petitioner’s PETPLAN trademark in its entirety, thus resulting in a domain name that is identical to the Petitioner’s PETPLAN trademark when excluding the .se TLD. The disputed domain name should be considered identical and confusingly similar to the Petitioner’s PETPLAN trademark.

2. Registered or used in bad faith

The Petitioner believes the Domain Holder is acting in bad faith. By registering a domain name that is identical to Petitioner’s PETPLAN trademark, the Domain Holder has created a domain name that is confusingly similar to the Petitioner’s trademark. As such, the Domain Holder has demonstrated a knowledge of and familiarity with the Petitioner’s brand and business. In light of the facts set forth within this Petition, it is not possible to conceive of a plausible situation in which the Domain Holder would have been unaware of the Petitioner’s brands at the time the disputed domain name was registered. PETPLAN is so closely linked and associated with the Petitioner that the Domain Holder’s use of this mark, or any minor variation of it, strongly implies bad faith. At the time of registration of the disputed domain name, the Domain Holder knew, or at least should have known, of the existence of the Petitioner’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Petitioner’s business prior to the Domain Holder’s registration of the disputed domain name, the Petitioner has been in business for over 35 years, is licensed in numerous countries and is consistently ranked the number one pet insurance provider in the United Kingdom. Also, as a pioneer in their field, the Petitioner has numerous awards to their credit, which demonstrates the Petitioner’s fame. Further, when performing a search for “petplan” on “www.google.se”, this returns multiple links referencing the Petitioner and its business. The same occurs when searches are done on alternative search engines.

A domain holder should be considered as possessing actual notice and knowledge of a petitioner’s marks, and thus having registered the domain in bad faith, where the Petitioner’s mark is well-known and the circumstances support such a finding, as is the case here.

The disputed domain name currently resolves to an inactive site and is not being used. The word bad faith “use” 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. The disputed domain name is confusingly similar to the Petitioner’s trademarks, and the Domain Holder has made no use of the disputed domain name, factors which should be duly considered in assessing bad faith registration and use. Although the domain name is not currently being used, there is no logical reason as to why the Domain Holder would register this particular domain name, which contains the PETPLAN trademark in its entirety, had he/she not known of the PETPLAN trademark. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith, with no good faith use possible.

Furthermore, the Petitioner tried to contact the Domain Holder on repeated occasions through a cease and desist letter, but the Domain Holder never answered. The Domain Holder’s failure to provide an explanation of his choice in the disputed domain name, is a strong indication of bad faith registration.

Finally, in registering the domain name, the Domain Holder is preventing the trademark holder and Petitioner in these proceedings from reflecting his trade name in the corresponding domain name on the Swedish market. A would-be customer would expect to reach the Petitioner’s website when typing in “www.petplan.se” based on the fame of the brand. Petitioner has been very active in securing domain names in Europe. This cannot have escaped the Domain Holder’s notice in these proceedings.

3. No rights nor legitimate interests

The granting of registrations by the European Union Intellectual Property Office (EUIPO) to Petitioner for the PETPLAN trademark is prima facie evidence of the validity of the term PETPLAN as a trademark, of Petitioner’s ownership of this trademark, and of Petitioner’s exclusive right to use the PETPLAN trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. The Domain Holder is not sponsored by or affiliated with Petitioner in any way. The Petitioner has not given Domain Holder permission to use the Petitioner’s trademarks in any manner, including in domain names.

The Petitioner and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Domain Holder registered the disputed domain name on December 3, 2014, which is significantly after the Petitioner filed for registration of its PETPLAN trademark with the EUIPO in 2000. It is also significantly after the Petitioner’s registration of its <petplan.co.uk> domain name on August 11, 1996.

The Domain Holder is using a privacy WhoIs available to private persons or sole traders, the only visible part identifies the domain owner as being “bjrnho0143-85929”, which does not resemble the disputed domain name in any manner. Furthermore, a search of the Swedish Trademark Database PRV reveals that marks containing or matching the term “Petplan” are all owned by the Petitioner in these proceedings. Therefore, the Domain Holder, does not appear to have any rights or own a registered brand identical or similar to the domain name.

A domain holder may be considered to have a right or legitimate interest in a domain name if it can provide evidence that it uses the domain name in its linguistic meaning. The PETPLAN trademark though it is composed of two generic words, however put together “petplan” has no meaning in either Swedish or English – it is not a dictionary term, nor an idiomatic expression, and therefore as such has no linguistic meaning.

The Domain Holder is using the disputed domain name to redirect Internet users to a website that resolves to a parked web page and lacks content. The Domain Holder has failed to make use of this disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, however, has blocked the Petitioner from registering the domain name and posting a website to it which evinces a lack of rights or legitimate interests in the disputed domain name.

The Domain Holder has ignored the Petitioner’s attempts to resolve this dispute outside of these administrative proceedings. In other words the Domain Holder had ample opportunity to justify his rights or legitimate interests in the disputed domain name prior to the Petitioner’s submission, the fact that he has chosen not to, is indicative of a lack of these rights.

Finally, on balance of the facts set forth above, it is more likely than not that the Domain Holder knew of and targeted the Petitioner’s trademark, and the Domain Holder should be found to have registered and used the disputed domain name in bad faith.

The Petitioner has submitted evidence, i.a., in the form of a list of the Petitioner’s trademark registrations, screenshot for the domain name, screenshot from the Petitioner’s website, a copy of cease and desist letter etc.

B. Domain Holder

The Domain Holder did not submit any response.

7. Discussion and Findings

A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:

1. The domain name is identical or similar to

a. a distinguishing product feature,

b. a distinguishing business feature,

c. a family name,

d. an artist’s name (if the name is not associated with someone who deceased a long time ago),

e. a title of another party’s copyrighted literary or artistic work,

f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),

g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006,

h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008,

i. a geographic designation that is protected by the European Council’s Regulation (EU) 1234/2007, or

j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation, which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and

2. The domain name has been registered or used in bad faith, and

3. The domain holder has no rights or justified interest in the domain name.

All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.

A. The domain name is identical or similar to a trademark which is legally binding in Sweden and to which the Petitioner can prove its rights

The Petitioner is the owner of, i.a., EU trademark registration no 000328492 for PETPLAN and EU trademark registration no 001511054 for PETPLAN. The disputed domain name is in all essential aspects identical to the Petitioner’s registered trademarks. The Petitioner hereby meets the first condition.

B. The domain name has been registered or used in bad faith

The Petitioner claims that the Domain Holder has registered and used the domain name i) with knowledge of the Petitioner’s trademarks; and ii) to cause confusion among Internet users as to the source of the disputed domain name. According to the Petitioner, the registration of the domain name also prevents the Petitioner from reflecting its tradename in the corresponding domain name on the Swedish market.

The Petitioner’s claims are supported by its application and submitted evidence. Nothing has emerged which contradicts the Petitioner’s claims. The Arbitrator finds that the Domain Holder has registered and used the domain name in bad faith.

C. The Domain Holder has no rights or justified interest in the domain name

The Petitioner claims that the Domain Holder i) has no permission from the Petitioner to use the Petitioner’s trademarks, ii) has no trademark rights or other rights identical or similar to the domain name; iii) has not registered the domain name for its linguistic meaning; iv) has not demonstrated any attempt to make legitimate use of the domain name and website; v) has blocked the Petitioner from registering the domain name and posting a website to it; and vi) has ignored the Petitioner’s attempts to resolve the dispute outside of these administrative proceedings.

The Petitioner’s claims are supported by its application and submitted evidence. Nothing has emerged which contradicts the Petitioner’s claims. The Arbitrator finds that the Domain Holder has no rights or justified interest in the domain name.

8. Decision

The domain name <petplan.se> shall be transferred to the Petitioner.

9. Summary

The Petitioner is the owner of EU trademark registration no 000328492 for PETPLAN and EU trademark registration no 001511054 for PETPLAN. The disputed domain name is in all essential aspects identical to the Petitioner’s registered trademarks. The Domain Holder has registered the domain name with knowledge of the Petitioner’s trademarks, to cause confusion among Internet users as to the source of the disputed domain name and to prevent the Petitioner from reflecting its tradename in the corresponding domain name on the Swedish market. The Domain Holder has registered and used the domain name in bad faith. The Domain Holder has no permission from the Petitioner to use the Petitioner’s trademarks, has no trademark rights or other rights identical or similar to the domain name, has not registered the domain name for its linguistic meaning, has not demonstrated any attempt to make legitimate use of the

domain name and website and has blocked the Petitioner from registering the domain name and posting a website to it. The Domain Holder has no rights or justified interest in the domain name.

Jon Dal
Date: January 4, 2018