WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Petar Simonovic
Case No. D2016-2012
1. The Parties
The Complainant is Pet Plan Ltd of Guildford, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Petar Simonovic of Bronx, New York, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <prontopetplan.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 October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, 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 October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. The Respondent did not submit any response before the due date. Accordingly, the Center notified the Respondent’s default on November 1, 2016. On that same day, the Center received an informal email communication from the Respondent.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 16, 2016. 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 was founded in 1976 and is based in the United Kingdom; it is now a subsidiary of Allianz Insurance plc and part of the Allianz Global Group.
The Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees, including in the United States. In addition it offers insurance to pet care professionals and a pet finding service.
The Complainant is the owner of several trademark registrations for PETPLAN, notably:
- UK Trademark Registration No. 2052294, in int. cl. 36, of January 17, 1997;
- UK Trademark Registration No. 2222270, in int. cl. 6, 16, 25, 35, 36, 41, of April 6, 2001;
- EU Trademark Registration No. 000328492, in int. cl. 36, of October 16, 2000;
- EU Trademark Registration No. 0015111054, in int. cl. 16, 25, 26, 35, 36, 41 and 42, of December 18, 2001;
- EU Trademark Registration No. 011470465, in int. cl. 6, 16, 18, 35, 36, 41 and 42, of July 12, 2013;
- U.S. Trademark Registration No. 3161569, in cl. 6, 16, 25, 36 and 41, of August 26, 2004;
- U.S. Trademark Registration No. 4524285, in int. cl. 6, 16, 18, 35, 36 and 41, of December 14, 2012.
The Complainant is present on the Internet through its official websites and owns domain names containing its trademark PETPLAN and different variations thereof, including <petplan.co.uk> and <petplan.com>.
The Respondent registered the disputed domain name on February 7, 2016. The disputed domain name is linked to a webpage containing sponsored listings some of them relating to the field of insurances and pets.
On April 14, 2016, the Complainant sent a cease and desist letter to the Respondent notably asking for the transfer of the disputed domain name.
The same day, the Respondent answered in an email that the disputed domain name is not being used in trade and that he did not know that PRONTO was trademarked.
On April 19, 2016, the Complainant sent an email to the Respondent informing him:
“(…) PETPLAN is the dominant portion of the domain name and the term “pronto” is an extraneous term which does not need to trademarked. Further, the addition of the term “pronto” to the trademark PETPLAN does not create a new or unique term or domain name.
To avoid further action by PETPLAN we respectfully ask that you agree to transfer the domain name <prontopetplan.com>. (…)”
The Respondent did not answer to this email.
5. Parties’ Contentions
The Complainant alleges to be the owner of several trademark registrations for PETPLAN which is captured in its entirety in the disputed domain name.
The mere addition in the disputed domain name of the generic prefix “pronto”, meaning “ready” or “hello” does not negate the confusing similarity with the Complainant’s trademark. It is likely that the addition of this generic term would be regarded by the Internet users as supplementary element for marketing purposes.
The Complainant further states to have valid rights over the trademark PETPLAN which means that it has the exclusive right to use the PETPLAN trademark in commerce in connection with the goods and services specified in the registration certificates.
On the legitimate interest issue, the Complainant mentions to have no relationship whatsoever with the Respondent which would legitimate the latter to register the disputed domain name. Furthermore, the Complainant is of the opinion that the disputed domain name is used to redirect Internet users to a website featuring links to third-party websites for financial gain.
On the bad faith registration and use issue, the Complainant alleges that the Respondent registered the disputed domain name well after the Complainants registered its trademark rights which are known internationally and which are used. By registering a domain name that incorporates in its entirety the Complainant’s famous PETPLAN trademark while adding a generic term “pronto” to the beginning of the said trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark as well as its <petplan.co.uk> domain name.
The circumstances of the case, in particular the response of the Respondent to the Complainant’s cease and desist letter as well as the famous character of the PETPLAN mark shows that the Respondent has demonstrated knowledge and a familiarity with the Complainant’s brand and business. Consequently, the Respondent knew the trademark of the Complainant when registering the disputed domain name.
The Complainant is also of the opinion that the Respondent used the “CashParking” service offered by the Registrar which allows the registrant to monetize its parked domain name. The use of pay-per-click links on confusingly similar domains for commercial gain constitutes bad faith use.
The Respondent did not reply to the Complainant’s contentions before the due date for Response.
6. Discussion and Findings
I. Late filing and formal deficiencies of the Response
Paragraph 5 of the Rules provide the form in which the Response shall be submitted, that the Response shall be submitted within twenty (20) days of the commencement of the administrative proceedings that the Center may, at the request of the Respondent, in exceptional cases extend the period for the filing of the Response and that (e) if a Respondent does not submit a Response, in the absence of exceptional circumstance, the Panel shall decide the dispute based on the complaint.
Paragraph 10(a) of the Rules provides that “the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”.
Finally, paragraph 10(b) of the Rules also provides that “In all cases, the Panel shall ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case”.
Responses that were submitted late were taken into account by the panels notably in cases in which:
- the response was filed before commencement of the decision-making process by the panel (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035);
- the lateness did not delay the decision (See Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591);
- the response was late only by one day (See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384; Arthur Guiness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710).
Paragraph 5(c) of the Rules provides a certain number of formal requirements which have to be complied with in relation to a Response. As a general rule, panels have usually refused to take deficient responses into consideration when these were constituted by a simple email (See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009), unless a late deficient response clarifies an issue fundamental to a dispute (See NB Trademarks, Inc. v. Domain privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984).
In the present matter, no request was received by the Center from the Respondent to extend the time for filing the Response in this case.
The Respondent sent an email with some brief statements giving his opinion over this matter on November 1, 2016, that is four days after the expiration of the deadline to respond.
The Panel finds that this belated Response has no incidence on the expediency of the procedure as it was given well before the commencement of the decision-making process and that it did thus not delay the decision.
However, the email of the Respondent does not comply with most of the requirements contained in paragraph 5(c) of the Rules and does not bring any facts or legal arguments which would clarify issues fundamental to the dispute.
Under the circumstances, the Panel will not take the Respondent’s email of November 1, 2016, into consideration.
II. Substantive Issues
Under the Policy, in order to prevail, a complainant must prove the following three elements to obtain the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element requires that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights. See the Policy, paragraph 4(a)(i).
The Complainant has shown to have registered trademark rights for PETPLAN in many countries.
The disputed domain name contains the Complainant’s trademark in its entirety. The sole addition of the generic Top-Level Domain (“gTLD”) “.com” and of the generic term “pronto” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The second element requires that the respondent has no rights or legitimate interests in respect of the disputed domain name. See the Policy, paragraph 4(a)(ii). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights to or legitimate interests in the disputed domain name.
In particular, the Complainant has established that it has never authorized the Respondent to register and/or use the trademark PETPLAN in the disputed domain name.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
No evidence is contained in the case at hand which would evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). The Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found.
None of these circumstances enumerated in the aforementioned provision are applicable in the present matter.
In this context, the Panel notes that:
- the Complainant has shown to have rights in the trademark PETPLAN for many years, to use the said mark, notably in the United States where the Respondent is based and on the Internet through official websites, which are all elements which demonstrate that its trademark acquired a certain notoriety;
- a search on the Internet shows that the Complainant operates a business under the name and trademark PETPLAN and it is not conceivable that the Respondent was not aware of it when registering the disputed domain name particularly since the disputed domain name contains the PETPLAN trademark in its entirety and that the mere addition of the generic term “pronto” is not sufficient to create a distinction;
- it can be inferred from the Respondent’s email of April 14, 2016 that he indeed knew the existence of the Complainant’s PETPLAN business and trademark;
- the Respondent took active steps with the Registrar in order to have the disputed domain name linked to a parking webpage containing sponsored links including to the website of an insurance company which is a competitor of the Complainant;
- the Respondent has not shown to operate a business or to have any commercial and/or concrete personal interest in relation to pets which would explain the registration of the disputed domain name.
Under these circumstances, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <prontopetplan.com> be transferred to the Complainant.
Theda König Horowicz
Date: December 5, 2016