WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Chen Qingling / Domain Administrator See PrivacyGuardian.org
Case No. D2015-0385
1. The Parties
The Complainant is Pet Plan Ltd. of Surrey, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Chen Qingling of Minneapolis, Guangdong, China / Domain Administrator See PrivacyGuardian.org of Phoenix, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pet-plan.org> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, 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. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint and the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 9, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 4, 2015. 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 provides pet insurance for domestic pets, insurance to pet care professionals and a pet finding service. It was founded in 1976 and is now a subsidiary of the Allianz Insurance plc, which is part of the Allianz Global Group – one of the world’s foremost financial services provider. According to the Complaint, its website at “www.petplan.co.uk” receives about 400,000 hits per month and its website at “www.petplan.com” around 21,000 hits per month. It claims to be the number one pet insurance provider in the UK and has been the winner of a number of awards and other accolades each year since 2008.
It has numerous registered trademarks including:
- PET PLAN:
(a) United States Trademark No. 3,161,569, which was registered on October 24, 2006 in respect of a range of goods and services in International Classes 6, 16, 25, 36 and 41 including metal name badges, printed materials related to pet welfare, education and insurance and veterinary practice management, clothing, insurance services and education and training services related to animal welfare;
(b) Canadian Trademark No. 463,628, which was registered on September 27, 1996 in respect of insurance broking services in connection with health insurance for domestic animals;
(c) Canadian Trademark No. 592,526, which was registered on October 17, 2003 in respect of a range of goods and services in International Classes 6, 16, 25, 35 and 36;
(d) Community Trademark No. 000328492 (as one word in a figurative style), which was registered on October 16, 2000 in respect of insurance brokerage relating to pets in International Class 36;
(e) Community Trademark No. 001511054 (as one word in a figurative style), which was registered on December 18, 2001 in respect of a range of goods and services in International Classes 16, 25, 26, 35, 36, 41, 42;
(f) Australian Trademark No. 918123 (as one word in a figurative style), which was registered on June 28, 2002 in respect of a range of goods and services in International Classes 16, 35, 36 and 41; and
(g) United Kingdom Trademark No. 2222270, which was filed on February 14, 2000 in respect of a range of goods and services in International Classes 6, 16, 25, 35, 36, 41 and 44;
- PET PLAN & design (the words “petplan” are superimposed on a stylized dog identification badge):
(a) United States Trademark No. 4,524,285, which was registered on May 6, 2014 in respect of a range of goods and services in International Classes 6, 16, 18, 35, 36, 41, 42 and 45;
(b) Community Trademark No. 011470465, which was registered on July 12, 2013 in respect of a range of goods and services in International Classes 6, 16, 18, 25, 26, 35, 36, 41 and 44;
(c) Australian Trademark No. 1534617, which was registered on January 8, 2013 in respect of a range of goods and services in International Classes 6, 16, 18, 35, 36, 41 and 44;
(d) United Kingdom Trademark No. 2645992, which was filed on December 14, 2012 in respect of a range of goods and services in International Classes 6, 16, 18, 35, 36, 41 and 44.
The disputed domain name was registered on June 1, 2013.
The Registrar has confirmed that the language of the registration agreement is English.
5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in section 4 above: PET PLAN or PETPLAN (the word mark) and PET PLAN and device (the device mark).
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.org” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
On that basis, the disputed domain name differs from the Complainant’s word mark by the insertion of a hyphen between the words “pet” and “plan”. The mere addition of such a punctuation mark does not dispel the potential for confusing similarity. The Panel also finds confusing similarity to device mark on the basis that the visual elements of the device are usually disregarded under the Policy as illustrations cannot be registered as domain names and the words “Pet Plan” superimposed on the device are sufficiently prominent that they would form a natural reference point for the trademark: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These circumstances are usually sufficient to constitute a prima facie case.
In the present case, the Panel notes that the phrase “pet plan” could be considered descriptive in some contexts. The disputed domain name also resolves to a website which appears to be a bulletin board on which people appear to be able to place messages about pets, such as a pet of some description has been found somewhere or other pet related information. The Complaint includes evidence which suggests that this appearance is largely a pretext. First, some of the “messages” are apparently dated before the disputed domain name was even registered. Secondly, other “messages” are dated in the future. So, for example, a “thread” entitled “Our dog Max: Still Alive” includes a message apparently dated September 9, 2015. The Complainant also points out that the dates of “messages” appear to change from one visit to the next. Further, the website is “littered” with pay-per-click advertisements for products; many are pet related, some target the services provided by the Complainant although they are apparently not related to the Complainant. Other “messages” are what may euphemistically be described as “adult content”.
The Respondent has defaulted and has not sought to explain these anomalies or otherwise justify his, or her, conduct.
The heavy use of what appear clearly to be pay-per-click advertisements promoting the commercial products and services of third parties precludes the Respondent from relying on paragraph 4(c)(iii) above in respect of legitimate noncommercial or fair use. Such use, which appears to be seeking to take advantage of the Complainant’s trademark for commercial gain, also does not qualify as a good faith offering of goods and services under the Policy: Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The way in which the Respondent has been using the disputed domain name has been described in section 5B above. For the reasons set out there, the Panel has found that that use is not use in good faith under the Policy. Accordingly, the disputed domain name is being used in bad faith as that expression is understood under the Policy.
The disputed domain name was registered many years after the Complainant’s business started up and also many years after the word marks identified in section 4 above were registered.
In addition, the Panel notes that the Respondent has claimed in his, or her, WhoIs information an address in a place called “Minneapolis, Guangdong, 516001, CN”. The Panel is aware of a place called Minneapolis in Minnesota in the United States of America, but not of a place with that name in China. The address details given in the WhoIs information otherwise conform to the style usually used in North America. However, there does not appear to be a “zipcode” 516001 in Minnesota – although it is a “pincode” for a place in India. The address details provided by the Respondent, therefore, appear to be false. The provision of false contact details is itself a basis for finding bad faith under the Policy: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In these circumstances, the Panel finds that the disputed domain name has been both registered and used in bad faith.
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 <pet-plan.org> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 15, 2015