WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang
Case No. D2016-2014
1. The Parties
The Complainant is Pet Plan Ltd of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Zhichao Yang of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <gppetplan.com> is registered with NameSilo, 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 the same day, 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. The Center sent an email communication to the Complainant on October 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 2, 2016.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 22, 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 011470465, in int. cl. 6, 16, 18, 35, 36, 41 and 44, of July 12, 2013
- U.S. Trademark Registration No 3161569, in int. cl. 6, 16, 25, 36 and 41, of October 24, 2006
- U.S. Trademark Registration No. 4524285, in int. cl. 6, 16, 18, 35, 36, 41 and 44, of May 6, 2014.
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 23, 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. No response was given to the said letter.
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 disputed domain name varies from the Complainant's trademark by two letters [g] and [p], [p] being an intentional typo for the letter [o]. The mere addition in the disputed domain name of [gp] which is a typo of the generic term "go" does not negate the confusing similarity with the Complainant's trademark. As the disputed domain name differs from the Complainant's mark by two letters, the Complainant considers it as an example of typo-squatting in the sense that this slight misspelling of a distinctive or famous mark cause an Internet user to reach an unintended website.
Furthermore, the term "go" is closely linked and associated with the Complainant's brand thus increasing the confusing similarity. Indeed, the term "go" is used in connection with the PETPLAN trademark by Complainant's U.S. licensee for their website "www.gopetplan.com".
For all these reasons, the Complainant estimates that the disputed domain name is confusingly similar with its PETPLAN trademark.
On the legitimate interest issue, the Complainant states to have valid rights over the trademark PETPLAN through its various registrations and to therefore have the exclusive right to use the PETPLAN trademark in commerce in connection with the goods and services specified in the registration certificates.
The Complainant mentions to have no relationship whatsoever with the Respondent or to have authorized the latter to use "PETPLAN" which would have legitimated the latter to register the disputed domain name. It is underlined in this context that the Respondent is not commonly known by the disputed domain name.
Furthermore, the Complainant refers to the fact that the disputed domain name is used to redirect Internet users to a website featuring links to third-party websites which directly compete with Complainant's business, in particular to third-party links for insurance. Presumably, the Respondent receives pay-per-click fees from the linked websites which is not a bona fide offering of goods or services.
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 Complainant's famous "PETPLAN" and adding a one letter typo of the generic term "go" to the beginning of the said famous trademark, the Respondent has created a domain name that is confusingly similar to Complainant's trademark as well as its <petplan.co.uk> domain name which shows that the Respondent knew the Complainant's mark when registering the disputed domain name. The long-standing business of the Complainant for over 35 years and its international activity are further evidence of its well-known character and of the fact that the Respondent must have been aware of it.
The Complainant is also of the opinion that the Respondent used the disputed domain name in bad faith by creating a likelihood of confusion and by using the disputed domain name to confuse Internet users looking for Complainant's services. The Respondent is thus seeking to capitalize on the fame and goodwill of the Complainant's trademark in order to increase traffic to the disputed domain name's website in order to gain profit through pay-per-click links.
The Complainants further refers to the fact that the Respondent has engaged in a bad faith pattern of cybersquatting as he already had to defend himself in numerous UDRP cases. In this frame, the Complainant notes that the Respondent currently holds a wide range of domain names containing third-party trademarks.
So as to further assess the bad faith use, the Complainant also mentions that the Respondent had employed a privacy service to hide its identity and that he ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
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 two letters [g] and [p] in front of "petplan" is not sufficient to distinguish the disputed domain name from the Complainant's trademark.
In the absence of any response to the complaint, it is not possible to determine with certainty whether [gp] is indeed an intentional typo of the generic term [go] as developed by the Complainant; this said, it is plausible considering that the Complainant has evidenced that one of its licensees in the United States operates a website under the domain name <gopetplan.com>.
In any event, the fact is that the trademark PETPLAN is dominant and easy to recognize in the disputed domain name. The presence of two letters at the beginning of the disputed domain name is not sufficient to render it distinctive from the Complainants 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 developed a series of arguments in order to demonstrate the lack of rights and legitimate interests of the Respondent in the disputed domain name and 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). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found; shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
Firstly, the Complainant has demonstrated that it owns several registrations worldwide for the trademark "PETPLAN" in relation with insurances for pets, that his mark has been used for decades in some countries such as in the United Kingdom and that it has an Internet presence through its own official websites operated notably with the domain names <petplan.co.uk> and <petplan.com> and through websites of its licensees such as "www.gopetplan.com".
The trademark "PETPLAN" has therefore acquired a certain level of notoriety and it is therefore not conceivable that the Respondent did not know "PETPLAN" and the business attached thereto when registering the disputed domain name, particularly since the disputed domain name is linked to a webpage containing links to third-party websites active notably in the field of insurances such as the Complainant is.
Secondly, the Complainant has also shown that the Respondent has registered several domain names containing trademarks owned by third parties and that he was cited as Respondent in various UDRP cases with similar fact situations.
He thus engaged in a pattern of registering domain names containing third party trademarks in order to prevent their owners to use these in the said corresponding domain names. Such pattern of conduct qualified as cybersquatting is obviously a bad faith registration case which falls under paragraph 4(b)(ii) of the Policy.
Thirdly, the disputed domain name is linked to a webpage containing sponsored listings some of them being related to the field of insurances and pets which the Complainant is known for. By doing so, the Respondent creates a likelihood of confusion of the Complainant's trademark and domain names and attracts Internet users to websites of Complainant's competitors. It can be left open if it is for financial gain as other circumstances show the bad faith registration of the Respondent.
Fourthly, as underlined by the Complainant, the Respondent has chosen to use privacy service when registering the disputed domain name. While such a conduct is not a bad faith behavior as such, it is with no doubt a further factor which shows the bad faith intent of the Respondent when he chose the disputed domain name.
Finally, the silence of the Respondent within these proceedings is also suggestive of bad faith.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also 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, <gppetplan.com> be transferred to the Complainant.
Theda König Horowicz
Date: December 7, 2016