WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd. v. Helen Slottje

Case No. D2018-0943

1. The Parties

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

The Respondent is Helen Slottje of Amherst, New Hampshire, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <petplan.law> is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2018, 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 May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Response was filed with the Center on May 4, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 4, 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.

On May 9, 2018, the Complainant made a supplemental filing in reply to the Response. Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, while paragraph 12 of the Rules provides that the Panel may request further statements or documents from the parties it may deem necessary to decide the case. On this basis, the Panel has decided to accept the Complainant’s supplemental filing and to take into account when deciding the dispute, since it deals with issues raised by the Respondent that are relevant to the dispute.

4. Factual Background

The Complainant was founded in 1976. It is part of the Allianz Global Group - one of the world’s foremost financial services providers. The Complainant provides pet insurance for domestic and exotic pets in the United Kingdom and around the globe through various licensees in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. The company offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals, as well as insurance to pet care professionals and a pet finding service. The Complainant has continuously operated under the name “Pet Plan” in connection with its pet insurance products.

The Complainant is the owner of the following trademark registrations for PETPLAN (the “PETPLAN trademark”):

- the trademark PETPLAN with registration No.3161569, registered in the United States on October 24, 2006 for goods and services in International Classes 16, 36, 41;

- the trademark PETPLAN with registration No. 4524285, registered in the United States on May 6, 2014 for goods and services in International Classes 6, 16, 18, 35, 36, 41, 44;

- the trademark PETPLAN with registration No. TMA463628, registered in Canada on September 27, 1996 for services in International Class 36;

- the trademark PETPLAN with registration No TMA592526, registered in Canada on October 17, 2003 for goods and services in International Classes 16, 25, 26, 35, 36, 38, 40, 41, 42, 44;

- the trademark PETPLAN with registration No. 2052294, registered in the United Kingdom on January 17, 1997 for services in International Class 36;

- the trademark PETPLAN with registration No. 2222270, registered in the United Kingdom on April 6, 2001 for goods and services in International Classes 6, 16, 25, 35, 36, 41, 42, 45;

- the trademark PETPLAN with registration No. 2645992, registered in the United Kingdom on June 14, 2013 for goods and services in International Classes 6, 16, 18, 35, 36, 41, 44;

- the trademark PETPLAN with registration No. 328492, registered in the European Union on October 16, 2000 for services in International Class 36;

- the trademark PETPLAN with registration No. 1511054, registered in the European Union on December 18, 2001 for goods and services in International Classes 16, 25, 26, 35, 36, 41, 42; and

- the trademark PETPLAN with registration No. 918123, registered in Australia on May 23, 2005 for goods and services in International Classes 16, 35, 36, 41.

The Complainant has registered and uses the domain names <petplan.co.uk> and <petplan.com>.

The disputed domain name was registered on November 1, 2017 and redirects visitors to the website at “www.join.law”.

5. Parties’ Contentions

A. Complainant

The Complainant states that its PETPLAN trademark is known internationally. The Complainant has been ranked the number one pet insurance provider in the United Kingdom and has won numerous awards including the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance winner from 2008 – 2016, World Branding Awards – Brand of the Year 2017-2018, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017. The Complainant’s website at www.petplan.co.uk receives almost 400,000 hits each month and its website at “www.petplan.com” receives 21,000 hits per month.

The Complainant submits that the disputed domain name is identical to the Complainant’s PETPLAN trademark because it consists solely of the same trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by it, is not sponsored by or affiliated with the Complainant, and the Complainant has not given the Respondent a permission to use the PETPLAN trademark in any manner, including in domain names. The Complainant submits that the disputed domain name redirects to the website that resolves to a blank page and lacks content. The Respondent has indicated that she has plans with regards to the disputed domain name, but such plans have not materialized and the disputed domain name is still unused almost six months after it was registered. The Complainant disagrees that the Respondent’s business plan does not clash with the Complainant’s service offering, as it is likely to cause confusion since it pertains to pet care.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name on November 1, 2017, which is significantly after the Complainant filed for registration of its PETPLAN trademark with the UKIPO in 1997 and the USPTO in 2006, and significantly after the Complainant’s registration of its <petplan.co.uk> domain name on August 1, 1996. By registering a domain name that consists solely of the Complainant’s PETPLAN trademark, the Respondent demonstrated that it has knowledge of and familiarity with the Complainant’s brand and business. According to the Complainant, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered. Since the Respondent is a lawyer, it seems unlikely that she would not perform a due diligence consisting at the very least of a trademark check and an Internet search prior to registering the disputed domain name. The existence of the Complainant’s prior rights cannot therefore have escaped her notice.

The Complainant states that it contacted the Respondent on November 16, 2017 with a request for the transfer of the disputed domain name and refund of the Respondent’s registration costs, but the Respondent refused and offered to sell the disputed domain name for a price.

In its supplemental filing, the Complainant points out that it offers legal services and has a legitimate claim to the disputed domain name. A key element of the Complainant’s offering is the provision of legal advice via its “Lawphone” helpline. The Complainant’s PETPLAN trademark registered in the United Kingdom with registration No.2222270 is registered in International Class 45 for the provision of legal advice or legal assistance. Therefore, the Complainant meets the required criteria to register a “.law” domain name, and the Respondent’s proposed use of the disputed domain name in relation to legal services would therefore compete directly with the Complainant’s own offering and would confuse customers.

B. Respondent

The Respondent submits that the disputed domain name is a specialty domain name and is not generic, so the rules invoked by the Complainant that are applicable to generic domain names do not apply to it.

The Respondent points out that the Complainant’s PETPLAN trademark is registered for insurance services and not for legal services. The Complainant does not provide legal services and is not a law firm or a lawyer. According to the Respondent, the Complainant would not be entitled to register the disputed domain name to offer pet insurance services, and it would be a violation of the terms of the “.law” domain if an insurance company selling pet insurance is allowed to register a “.law” domain name.

According to the Respondent, it is impossible for a “.law” domain name to be confused with the Complainant’s PETPLAN trademark and with generic “.com” domain names. The Complainant has no proper rights to the generic words “pet” and “plan” and those rights cannot be extended to the use of the disputed domain name in the generic Top-Level Domain (“gTLD”) “.law”.

The Respondent submits that the disputed domain name was not acquired with any intention of interfering with the Complainant’s sale of insurance products for pets. It was legitimately acquired by the Respondent as an attorney in connection with a slew of related domain names focused on “plan.law”, because the products to be offered are legal services and for creating a legal trust for a pet.

The Respondent alleges that the use of a “.law” domain name does not infringe on trademarks or service rights for insurance services. The Complainant has no legitimate expectations or rights to a “.law” domain name for its insurance services. By definition the entire point of the “.law” domain name is that it is for legal services and legal providers; a “.law” domain name on its very face evidences that the product is not and cannot be insurance. The Respondent is making a fair use of the disputed domain name and there is no possibility of diverting consumers looking for insurance given the “.law” gTLD. There is no possibility of tarnishing the generic not properly trademarkable “pet plan” insurance services by the use of the disputed domain name because the “.law” gTLD on its face indicates that no insurance services are being offered.

In her correspondence with the Complainant prior to this proceeding, the Respondent stated that the transfer of the disputed domain name to the Complainant was not possible because the domain name registration in the “.law” gTLD was exclusively limited to registered attorneys, law schools and other specified legal entities. She further stated that she had not made any use of the disputed domain name and had not violated any law in registering it in the “.law” gTLD, and that its registration could not interfere with the use of the PETPLAN trademark by an insurance company. In the same correspondence, the Respondent also stated that she was engaged in the estate planning business and was using the disputed domain name as a basis for estate planning for a variety of topics including wealth, land use planning (masterplan) and a number of others.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is 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 respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

A. Procedural issues

The Respondent submits that the disputed domain name is a specialty domain name and not a generic domain name, so the Policy does not apply to it. This argument of the Respondent is wrong. As confirmed by the Registrar in its verification response to the Center, the Policy applies to the disputed domain name. Therefore, the present proceeding is governed by the Policy and the Rules.

The Respondent further submits that the Complainant is not eligible to register the disputed domain name, and it would be a violation of the terms of the “.law” gTLD if an insurance company selling pet insurance is allowed to register a “.law” domain name, since the eligibility criteria for the registration of domain name in that gTLD require the registrant to be a registered attorney, law school or other specified legal entity. In this regard, having decided that it is proper to apply the Policy to the present dispute, the Panel will proceed with the consideration of the merits of the Complaint under the Policy. Whether the Complainant is eligible to register the disputed domain name is beyond the competence of the Panel; it is for the Registrar to decide this issue. Should the Complainant prevail in the present proceeding, it is up to it to engage with the Registrar to ascertain its eligibility to register the disputed domain name as part of the implementation of the Panel’s decision in the present proceeding.

B. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the PETPLAN trademark, as described in section 4 above. The Respondent’s allegations that the Complainant does not have proper trademark rights in PETPLAN (for legal services or otherwise) are in their substance wrong and controverted by the evidence submitted by the Complainant.

According to the Respondent, it is impossible for a “.law” domain name to be confused with the Complainant’s PETPLAN trademark and with generic “.com” domain names. The Panel notes in this regard that as summarized in paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD, including with regard to “new gTLDs”; the ordinary meaning ascribed to a particular gTLD would not necessarily impact assessment of the first element. The meaning of such gTLD may however be relevant to panel assessment of the second and third elements. The Panel sees no reason not to follow the same approach here and does not accept the Respondent’s argument.

The relevant part of the disputed domain name is therefore its section “petplan”. The Respondent has alleged that the Complainant has no proper rights to the generic words “pet” and “plan”. The Panel finds that this argument is irrelevant for the purposes of the test of identity or confusing similarity, as long as the Complainant has established its trademark rights in the sign “PETPLAN” as a whole, which is identical to the relevant section of the disputed domain name.

In view of the above, the Panel finds that the disputed domain name is identical to the PETPLAN trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not affiliated to the Complainant, has not been authorized by the Complainant to register and use domain names incorporating the PETPLAN trademark, and is not commonly known by the disputed domain names. The disputed domain name resolves to a blank page and lacks content. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not allege that it is affiliated to the Complainant, that she has been authorized by the Complainant to register and use the disputed domain name or that she is commonly known by the disputed domain name. In her defense, she states that the disputed domain name was not acquired with any intention of interfering with the Complainant’s sale of insurance products for pets. It was legitimately acquired by the Respondent as an attorney in connection with a slew of related domain names focused on “plan.law”, because the products to be offered were legal services and for creating a legal trust for a pet. In her communication with the Complainant prior to this proceeding, the Respondent also stated that she was engaged in the estate planning business and was using the disputed domain name as a basis for estate planning for a variety of topics including wealth, land use planning (masterplan) and a number of others.

The Panel has carefully reviewed the arguments of the Parties and the evidence submitted by them in this proceeding and has reached the following conclusions.

The Respondent’s name, as confirmed by the Registrar, does not reflect or resemble the disputed domain name. The disputed domain name incorporates the PETPLAN trademark entirely and is identical to it, and this trademark is registered for various products and services, including legal advice and assistance in International Class 45. The disputed domain name is registered in the “.law” gTLD, which is reserved to entities and individuals offering legal services. The website linked to the disputed domain name is inactive.

The Respondent has not provided any evidence in support of her statements that the disputed domain name was legitimately acquired by her as an attorney in connection with a slew of related domain names focused on “plan.law”; the Respondent has not even signed the Response. There is no evidence that (as alleged by the Respondent in her communication with the Complainant prior to this proceeding) the disputed domain name has been used for offering legal services for creating a legal trust for a pet or that the Respondent is engaged in the estate planning business and is using the disputed domain name as a basis for estate planning for a variety of topics including wealth, land use planning (masterplan) and a number of others. In the lack of any evidence in support of these statements, the Panel is not prepared to accept them as true and as establishing a legitimate reason why the Respondent has chosen to register the disputed domain name. Even if these statements were true, the use of the disputed domain name for the offering of legal services in relation to pet care appears to still fall within the scope of protection of the Complainant’s PETPLAN trademark as far as International Class 45 is concerned.

In addition, as stated by the Complainant in its correspondence with the Respondent prior to the present proceeding and undisputed by the Respondent, the Complainant is actually offering legal advice to its customers in relation to pet care and has registered its PETPLAN trademark in the Trademark Clearinghouse with the effect that the Respondent must have received notice of the Complainant’s trademark rights, including in respect of legal advice and legal assistance in International Class 45. If the Respondent is indeed a lawyer as she states, she should be in a good position to consider and appreciate the legal consequences of this factual situation and to take them into account when choosing what domain name to register and in which gTLD, and when deciding how to use it.

In view of this, the Panel is satisfied that the Respondent has registered the disputed domain name in the “.law” gTLD, being aware of the Complainant and of its trademark rights, including in respect of legal advice and legal assistance in International Class 45. Having nevertheless proceeded with the registration of the disputed domain name with this knowledge, it appears that this registration was made with an acceptance of the possibility that Internet users may be confused as to the affiliation of the disputed domain name to the Complainant and of the possibility that the disputed domain name might improperly exploit the popularity of the PETPLAN trademark to attract the attention of Internet users and to mislead them that they are dealing with the Complainant, without having the Complainant’s consent to do this. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) 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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the PETPLAN trademark and is identical to it. It was registered a considerable number of years after the Complainant first registered and started using its PETPLAN trademark in 1997. The PETPLAN trademark is itself registered for various products and services, including legal advice and assistance in International Class 45, and the disputed domain name is registered in the “.law” gTLD, which is reserved to entities and individuals offering legal services. It is undisputed that the Complainant is offering legal advice and assistance in relation to pet care to its customers and has registered its PETPLAN trademark in the Trademark Clearinghouse with the effect that the Respondent must have received notice of the Complainant’s trademark rights, including in respect of legal advice and legal assistance in International Class 45. As discussed in the section on rights and legitimate interests above, the Respondent submittedly being a lawyer must have taken the above circumstances into account when registering the disputed domain name and deciding how to use it, and the Respondent has not provided any evidence supporting a finding that she had a legitimate reason for its choice of domain name to register.

On the basis of the above, the Panel finds that the Respondent has registered the disputed domain name with knowledge of the Complainant and accepting the possibility that the disputed domain name may improperly benefit from the popularity of the PETPLAN trademark to attract traffic to the associated website by confusing Internet users that they are reaching an online location where they may find legal services related to pets offered or endorsed by the Complainant. The Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain name.

As summarized in section 3.3 of the WIPO Overview 3.0, from the inception of the Policy, 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. The Respondent has not denied that the disputed domain name is not being actively used. Nevertheless, the disputed domain name is identical to the PETPLAN trademark registered in multiple jurisdictions for various goods and services including legal advice and legal assistance. Since the Respondent has stated that it plans to use the disputed domain name for offering of legal services in relation to pets, this may add to the confusion of Internet users that they are being offered legal services originating from or endorsed by the Complainant and may represent an infringement of the trademark rights of the Complainant.

When looking at the totality of the above circumstances, the Panel accepts that the disputed domain name has been registered and 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 <petplan.law> be transferred to the Complainant upon the Registrar being satisfied of the Complainant’s eligibility under any relevant eligibility criteria to register a “.law” domain name. If the Complainant’s eligibility be not so established, the Panel orders that the disputed domain name <petplan.law> be cancelled.

Assen Alexiev
Sole Panelist
Date: June 28, 2018