WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Xuegong Wang / iFoodTracker
Case No. D2015-0926
1. The Parties
The Complainant is Pet Plan Ltd of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Xuegong Wang / iFoodTracker of Sandy, Utah, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <toppetplan.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 June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2015.
The Center appointed Andrew F. Christie as the sole panelist in this matter on July 7, 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 (including dogs, cats, rabbits, horses, reptiles, birds and small mammals) in the UK, and insurance to pet care professionals and a pet finding service. It was founded in 1976 and is based in Brentford, UK. It is now a subsidiary of Allianz Insurance plc, one of the largest general insurers in the UK and part of the Allianz Global Group, one of the world’s foremost financial services providers. The Complainant has operated under the name “Pet Plan” continually since its establishment.
The Complainant is the owner of many trademark registrations around the world for the word mark PETPLAN, and for composite word and image marks including the text “petplan”, the earliest of which in the UK dates from January 17, 1997. The Complainant has a strong Internet presence through its websites and is the owner of numerous domain names containing its trademark PETPLAN and different variations on it. The Complainant’s website at “www.petplan.co.uk” receives almost 400,000 hits each month and its website at “www.petplan.com” receives an additional 21,000 hits per month.
The disputed domain name <toppetplan.com> was registered on November 5, 2014. The Complainant has provided a screenshot, taken at some unspecified time prior to the filing of this Complaint, showing that the disputed domain resolves to a parking page website with apparently automatically generated, pay-per-click, links to third-party websites, some of which directly compete with the Complainant’s business.
During January and February, 2015, the Complainant sent a number of cease-and-desist letters to the Respondent by email. On February 17, 2015, in response to the Complainant’s third letter, the Respondent replied: “Are you interested in buying the domain? It is a good domain name.” On February 25, 2015, in response to the Complainant’s offer to reimburse the Respondent for costs associated with transferring the disputed domain name, the Respondent replied: “The domain name is for sale. Can’t give you for free.” In an attempt to settle the matter the Complainant offered to reimburse the Respondent USD 400 for the transfer. Although the Respondent initially agreed to this offer, subsequent communications with the Respondent to complete the transfer went unanswered.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because it captures, in its entirety, the Complainant’s trademark PETPLAN and simply adds the descriptive, laudatory term “top” to the beginning of the trademark. The mere addition of this descriptive, laudatory term does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. The addition of the generic Top-Level Domain (“gTLD”) identifier “.com” is irrelevant when establishing whether or not a domain name is identical or confusingly similar to a complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the granting of trademark registrations in several jurisdictions is prima facie evidence of the validity of PETPLAN as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the PETPLAN trademark in commerce on or in connection with the goods and services specified in the registration certificates; (ii) the Respondent is not sponsored by or affiliated with the Complainant in any way; (iii) the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names; (iv) the Respondent is not commonly known by the disputed domain name; (v) presumably the Respondent receives pay-per-click fees from the linked websites that are listed at the website to which the disputed domain name resolves and, as such, is not using the domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use; and (vi) the Respondent registered the disputed domain name in 2014, significantly after the Complainant obtained registration of its PETPLAN trademark in the UK in 1997.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent registered the disputed domain name on November 5, 2014, well after the Complainant registered its PETPLAN trademark and began using it to market and sell its goods and services in 1997; (ii) the presence of third-party, pay-per-click links at the website resolving from the disputed domain name is evidence of bad faith registration and use, whether the Respondent proactively elected to participate in the Registrar’s “CashParking” service, or merely parked the disputed domain name through non-use and inaction, resulting in pay-per-click advertising occurring at that domain; (iii) 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; (iv) following the Complainant sending a cease-and-desist letter via email to the Respondent on January 15, 2015, various correspondence ensued, including an inquiry from the Respondent as to whether the Complainant would like to purchase the disputed domain name to which the Complainant offered to reimburse USD 400 for the transfer, however the Respondent failed to complete the transfer despite initially agreeing to it; and (v) it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark when registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark PETPLAN, and prefaces it with the text string “top” and follows it with the gTLD identifier “.com”. The Panel considers that a typical Internet user would most likely read the text string “top” in the disputed domain name as being the descriptive, laudatory English word meaning the best or finest. The Panel finds the addition of the word “top” to the Complainant’s trademark does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its PETPLAN trademark. The evidence provided by the Complainant shows that the disputed domain name resolves to a website with links to other websites, including websites that appear to be operated by or for competitors of the Complainant. According to the present record, therefore, the Complainant has established a prima facie case that the disputed domain name is not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name or that it has, for any other reason, rights or legitimate interests in the disputed domain name. For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered nearly two decades after the Complainant first registered and began using its trademark PETPLAN. The evidence on the record provided by the Complainant with respect to the use of its PETPLAN trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being 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 <toppetplan.com> be transferred to the Complainant.
Andrew F. Christie
Date: July 21, 2015