WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Nicholas Plagge / SeniorTours Vacations
Case No. D2015-1691
1. The Parties
The Complainant is Pet Plan Ltd of Surrey, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nicholas Plagge / SeniorTours Vacations of Drexel Hill, Pennsylvania, United States of America, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Names <healthypetsplan.com> and <livewellpetplan.com> are registered with DomainPeople, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2015. On September 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 25, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. The Response was filed with the Center on October 20, 2015. The proceeding was suspended on October 26, 2015 upon Complainant's request based on the Respondent's statement in the Response. On November 18, 2015, the Center notified the parties that the proceeding was reinstituted upon the Complainant's request.
The Center appointed Charné Le Roux as the sole panelist in this matter on November 24, 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.
The Center received a communication from the Respondent on November 27, 2015 indicating as follows: "Thank you for the update. This means then that the compromise that I put forth is not acceptable to the other side. Please advise. Thanks."
4. Factual Background
The Complainant is a UK company founded in 1976 and specializing in providing a range of pet insurance products. The Complainant trades in the UK and, through licensing arrangements, also in the United States of America, Canada, Australia, New Zealand, Brazil, Germany and the Netherlands. The Complainant has received a number of awards as a pet insurance provider over the years 2008 - 2014, the most recently being the Consumer Money Facts Awards – Highly Recommended in 2014.
The Complainant owns several registrations for the trade mark PETPLAN in the United States of America, Canada, Australia and UK, as well as Community Trade Mark registrations, with the earliest registration dating to 1997. Its registrations cover goods and services in classes 6, 16, 18, 25, 26, 35, 36, 41 and 44. The Complainant also owns close to 110 PETPLAN type domain names, including <petplan.co.uk>, <petplan.com> (both registered in 1996), <petplan.asia>, <petplan.biz>, <petplan.club>, <petplan.international> and the like. The Complainant's websites at "www.petplan.co.uk" and "www.petplan.com" receive over 400 000 hits each month.
The Disputed Domain Names were registered on January 30, 2015 and February 5, 2015 respectively. The websites associated with the Disputed Domain Names currently resolve to blank pages. However, the website associated with the Disputed Domain Name <livewellpetplan.com> previously offered pet insurance and other products and services in competition with the Complainant's offerings. This content changed to the current inactive website shortly after the Complainant sent the Respondent a cease and desist letter on April 1, 2015. The Respondent's reaction to the cease and assist letter included an indication that although it did not agree with the Complainant's contentions, it would be prepared to sell both the Disputed Domain Names to the Complainant for an amount of USD 3,500 each.
5. Parties' Contentions
The Complainant submits that it has acquired rights in its PETPLAN trade mark by virtue of:
a. Registrations obtained in numerous countries for the said mark;
b. Its extensive use of its PETPLAN trade mark in relation to pet insurance products.
The Complainant also contends that its PETPLAN trade mark is well known as a consequence of substantial use that it has made of it over the past 15 years, and demonstrated by the numerous awards that it has received.
The Complainant argues that the Disputed Domain Names are confusingly similar to its PETPLAN trade mark in that they wholly incorporate the Complainant's trade mark, with the only differences being the addition of the descriptive terms "live well" and "healthy" and the addition of the letter "s" in the Disputed Domain Name <healthypetsplan.com>. It contends that the descriptive terms actually enhance the likelihood of confusion since they are so closely related to the Complainant's business.
The Complainant also submits that the Respondent lacks rights or legitimate interests in the Disputed Domain Names in that:
a. The Respondent is not affiliated with the Complainant.
b. The Complainant has not given the Respondent permission to use its trade marks in any manner.
c. The Respondent is not commonly known by the Disputed Domain Names.
d. The Respondent is not making a bona fide offering of goods or services, nor is making legitimate noncommercial or fair use of the Disputed Domain Names. The Complainant contends that the Respondent initially offered competing products on the website associated with the Disputed Domain Name <livewellpetplan.com>, which only changed subsequent to the Complainant's cease and desist letter, and that the sale of competing goods coupled with the unauthorized use of a third party's trade mark in a confusingly similar domain name does not qualify as a bona fide offering of goods and services. Insofar as the websites associated with the Disputed Domain Names currently resolve to blank pages, the Complainant submits that the Respondent has not demonstrated any attempt to make legitimate use of the Disputed Domain Names and that this demonstrates a lack of rights and legitimate interests.
e. The Respondent offered the Disputed Domain Names for sale for an amount that far exceeds the Respondent's out of pocket expenses in registering them, which also demonstrates a lack of rights and legitimate interests.
f. The Complainant registered its PETPLAN trade mark and associated domain names many years prior to the registration of the Disputed Domain Names.
The Complainant further contends that the Disputed Domain Names were registered and are being used in bad faith. It states that the fact that the Respondent registered the Disputed Domain Names well after the Complainant and its PETPLAN trade marks became famous and subsequently posted a website at one of the Disputed Domain Names offering competing pet insurance products, is evidence of the Respondent's bad faith conduct. The Complainant also indicates that the Respondent's choice of the Complainant's PETPLAN trade mark in the Disputed Domain Names, in addition to generic terms that describe the Complainant's business, demonstrate a knowledge of the Complainant's trade mark and business. The Complainant suggests that it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's trade mark at the time the Disputed Domain Names were registered. It also contends that the Respondent's current passive use of the Disputed Domain Names continue to constitute bad faith in the absence of indications that the Respondent could have registered and used the Disputed Domain Names for any non-infringing purpose. The Complainant argues that the registration of the Disputed Domain Names constitutes a disruption of the Complainant's business and, in addition, was made with the intention to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's trade mark users. The Complainant submits lastly that the Respondent's attempt to sell the Disputed Domain Names for a total USD 7,000 is evidence of bad faith.
The Complainant requests that the Disputed Domain Names be transferred to it.
The Respondent argues that it registered the Disputed Domain Names in good faith and that the Disputed Domain Name <livewellpetplan.com> was a combination of the "livewell" prefix which the Respondent had been using in numerous "livewell" domain names such as <livewellrestaurants.com>, <mylivewellplan.com> and the like. It states that the Disputed Domain Name <healthypetsplan.com> was to refer to the Respondent's pet insurance plan designed to keep pets healthy and that there was no intention to infringe the Complainant's rights in its intellectual property.
The Respondent also states that it intends to reactivate the websites linked to the Disputed Domain Names for its own legitimate business practices when time permits. The Respondent then goes on to indicate in its response that it consents to the remedy requested by the Complainant and that if the Complainant wishes for the Respondent to cancel the Disputed Domain Names, it should refund to the Respondent the registration costs in respect of both Disputed Domain Names, in the amount of USD 19.80.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Names, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished evidence of trade mark registrations for the mark PETPLAN in a number of countries as indicated above. The Complainant also claims that the PETPLAN trade mark is famous and one of the well known trade marks in the pet insurance industry, which it substantiates with the number of awards that it has received in respect of its PETPLAN business over the past six years, the substantial number of hits on its PETPLAN websites each month, as well as its extensive use of the PETPLAN trade mark over the past 15 years.
The Panel finds that the Complainant has succeeded in proving that it has rights in its PETPLAN trade mark and also that the trade mark has such a high degree of renown attaching to it that it can be considered famous in the pet insurance industry. The Panel also finds that the Disputed Domain Names are confusingly similar to the Complainant's PETPLAN trade mark. The differences between the Disputed Domain Names and the Complainant's trade mark, being the addition of the letter "s" to the Disputed Domain Name <healthypetsplan.com> and the addition of the terms "livewell" and "healthy" to the Disputed Domain Names respectively, does not change the overall impression created by the Disputed Domain Names. The essence of the PETPLAN trade mark remains, particularly when taking into account that PETPLAN has been well reputed for many years. In fact, the addition of the descriptive terms "livewell" and "healthy" only enhances the likelihood of confusion in referring to the Complainant's business.
The Complainant has satisfied this Policy requirement.
B. Rights or Legitimate Interests
The Complainant asserts that it has not granted the Respondent any rights in respect of the Disputed Domain Names, that the Respondent is not known by the Disputed Domain Names and that it has not made any legitimate noncommercial or fair use of the Disputed Domain Names. The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. The Respondent's only reaction to the claims made by the Complainant is in connection with the reason for its adoption of the descriptive terms "livewell" and "healthy". It does not importantly, provide any explanation for its adoption of the PETPLAN trade mark, which although being made up of two descriptive words, is not obvious and a word with no other meaning, as far as the Panel knows, other than to refer to the Complainant. The Respondent also does not provide any real explanation for its past use of one of the Disputed Domain Names in connection with pet insurance products or its future intentions with the Disputed Domain Names now that they point to inactive websites, other than indicating that it intends to reactivate them for its own business practices when time permits.
The Respondent's reaction to the Complainant's cease and desist letter also does very little to assist its case, which, despite a denial of the Complainant's rights, concluded with an offer to remove the offending content from one of the websites and sell the Disputed Domain Names for a total of USD 7,000.
The Respondent's submissions and actions are not consistent with that of a legitimate interest holder and the Complainant's contentions therefor stand largely unchallenged. Consequently the Panel finds that the Complainant has succeeded in meeting the burden of proof under this Policy requirement.
C. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Names at a time when the Complainant had an established reputation and numerous trade mark registrations as well as domain names for its PETPLAN trade mark. Clearly the Respondent's selection of the identical mark of the Complainant, combined with descriptive elements that refer to the Complainant's business, did not happen as coincidence. The fact that the website associated with one of the Disputed Domain Names was previously used in relation to the sale of pet insurance products also demonstrate the Respondent's intention to lead Internet users to believe that there is an affiliation between the Complainant and the Disputed Domain Name and that it had commercial gain as its driving force.
There was undoubtedly deliberate targeting of the Complainant by the Respondent and the Panel is of the view that the Respondent selected and registered the Disputed Domain Names to reap advantage of the Complainant's reputation in its PETPLAN trade mark. This intention is borne out by the Respondent's use of the one Disputed Domain Name to compete with the Complainant and its later opportunistic offer to sell the Disputed Domain Names to the Complainant.
Taking all of the circumstances of this case into account, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(i) and (iv) of the Policy.
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 Names <healthypetsplan.com> and <livewellpetplan.com> be transferred to the Complainant.
Charné Le Roux
Date: December 10, 2015