WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Esteban Rodriguez
Case No. D2016-2142
1. The Parties
Complainant is Pet Plan Ltd. of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Esteban Rodriguez of Ciudad del Maiz, San Luis Potosi, Mexico.
2. The Domain Name and Registrar
The disputed domain name <insurancepetplan.info> 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 21, 2016. On October 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 18, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 23, 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
Complainant is the owner of registrations for the word, stylized word, and word and design mark, PETPLAN (and PET PLAN) on the registers of the United Kingdom Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO), the United States of America Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO). Representative registrations include UKIPO word mark registration number 2,222,270, registration dated April 6, 2001, in international classes (ICs) 6, 16, 25, 35, 36, 41, 42 and 45, which scope of coverage includes insurance services (and other financial services); EUIPO stylized word mark, registration number 328,492, registration dated October 16, 2000, in IC 36, covering "insurance brokerage relating to pets"; USPTO stylized word mark, registration number 3,161,569, registration dated October 24, 2006, in ICs 6, 16, 25, 36 and 41, including coverage for insurance services "namely animal insurance administration and insurance brokerage", and; CIPO word mark, registration number TMA463,628, registration dated September 27, 1996, covering "Providing insurance broking services in connection with health insurance for domestic animals".
Complainant also is the owner of registrations for the word and design mark PETPLAN INSURANCE on the register of the UKIPO, registration number 2,646,524, registration dated May 3, 2013, in ICs 6, 16, 18, 35, 36, 41 and 44. Complainant also holds registrations for this word and design mark on the registers of the EUIPO and USPTO, and a stylized word registration for PETPLAN INSURANCE on the register of the CIPO.
Complainant provides pet insurance for domestic and exotic pets in the United Kingdom and other countries through licensees, including in Australia, Brazil, Canada, Germany, the Netherlands, New Zealand and the United States. Founded in 1976 in the United Kingdom, Complainant is now a subsidiary of Allianz Insurance plc, one of the largest general insurance companies in the United Kingdom. Complainant offers a wide range of pet insurance products, and according to Complainant is "the number one pet insurance provider". Complainant has registered a number of domain names incorporating its trademark, and operates extensively viewed websites at "www.petplan.co.uk" and "www.petplan.com".
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on July 21, 2016, and the disputed domain name has been registered to Respondent since that date.
Respondent has used the disputed domain name to direct Internet users to a website headed with the English language terms "Insurance Pet Plan", with the remainder of the website in Spanish language. The bulk of text on the website is attributed to an individual using the screen name "themasterchef062". The website provides information and opinions regarding pet insurance. Titles of postings include "La suscripción de seguros para sus animales" ("The subscription of insurance policies for your animals"), "Salud no tiene precio. Por su salud, la protección para sus animales de cuatro patas" ("Health does not have a price. For their health, the protection of your animals with four legs"), and "Guía de seguros de finanzas" ("Guide for financial insurance").1 These postings largely are devoted to general information regarding insurance for pets and discussion of issues. However, a lengthy posting headed "Agentes de Seguros y Bonos" ("Agents of Insurance and Bonds") promotes the services of a specific independent insurance agency based in the United States, HBG Seguros y Bonos, and refers in the text to that agency as "we" and as "our" agency, while promoting the capabilities of that specific agency.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it owns rights in the trademark PETPLAN (and PET PLAN) and PETPLAN INSURANCE as evidenced by registration on the trademark registers of various countries (see Factual Background above).
Complainant contends that its trademark is well known.
Complainant argues that the disputed domain name is confusingly similar to its trademark because it directly incorporates the term PETPLAN and adds the generic, descriptive term "insurance", which is closely associated with Complainant's brand and trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent is not sponsored by or affiliated with Complainant in any way; (2) Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names; (3) Respondent is not commonly known by the disputed domain name; (4) Complainant's mark is famous worldwide so that any use of that trademark would violate the rights of the trademark owner; (5) Respondent is not making a bona fide offering of goods or services with the disputed domain name; (6) Respondent is not making a legitimate or noncommercial fair use of the disputed domain name, inter alia, because Respondent is offering and attempting to sell the products of Complainant's competitors which directly compete with Complainant's own offerings (Complainant states "in one of the articles posted Respondent instructs the reader to send money and the online form to register their pet for pet insurance"); (7) because Respondent is not using the term PETPLAN as a company name, "it is quite clear that Respondent is simply trying to sponge off the Complainant's world-famous trademark", and; (8) Respondent registered the disputed domain name significantly after Complainant filed for registration of its trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name well after Complainant's trademark became famous and well-known; (2) at the time of registration Respondent knew or should have known of the existence of Complainant's trademark and that "registration of domain names containing well-known trademarks constitutes bad faith per se"; (3) Respondent has created a likelihood of confusion with Complainant and its trademarks by using the disputed domain name in association with the generic, descriptive term "insurance" to profit by offering products and services which are the same as those offered by Complainant; (4) Respondent's use of the disputed domain name constitutes a disruption of Complainant's business, and; (5) Respondent has ignored Complainant's cease-and-desist and transfer demands which is evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. According to the records of the express courier service, Respondent signed for and accepted delivery of the documents in Mexico. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark PETPLAN (and PET PLAN), as well as the word and design trademark PETPLAN INSURANCE, through registration at the UKIPO, EUIPO, USPTO and CIPO, including evidence of use the trademarks in commerce. Respondent has not challenged Complainant's assertion of rights. The Panel determines that Complainant has rights in the word trademark PETPLAN, and the word and design trademark PETPLAN INSURANCE.
The disputed domain name is <insurancepetplan.info>. This disputed domain name directly incorporates Complainant's PETPLAN trademark, preceded by the additional term "insurance" 2 . "Insurance" refers to the principal business of Complainant. The individual terms in Complainant's trademark are by themselves common descriptive terms. "Pet" refers to "a domesticated animal kept for pleasure rather than utility".3 "Plan" refers, inter alia, to a program for achieving an objective. It is a term that can be used in connection with pension and/or insurance policies. 4 Although each of the terms constituting Complainant's trademark is standing alone a common descriptive term, registration authorities in various countries have registered the combination term as a trademark, necessarily determining that the terms when combined are not generic or commonly descriptive of a genus of product or service. The disputed domain name <insurancepetplan.info> reproduces in full Complainant's PETPLAN trademark and incorporates Complainant's PETPLAN INSURANCE trademark changing the order of its terms. An Internet user viewing the term "insurance pet plan" might well find this confusingly similar to Complainant's PETPLAN INSURANCE trademarks. Respondent's addition of another common descriptive term "insurance" to Complainant's PETPLAN (or PETPLAN) trademark in the disputed domain name moreover does not create a distinct new term from the standpoint of the Policy in light of the fact that the additional term refers to the principal business of Complainant. An Internet user viewing the term "insurance pet plan" might well find this confusingly similar to Complainant's PETPLAN (or PET PLAN) trademark. Respondent has not challenged Complainant's assertion of confusing similarity. Although the use by Complainant of common descriptive terms (in combination) as trademarks prima facie creates a fairly weak level of protection, Complainant has sufficiently established that the consuming public is familiar with its marks in the relevant line of business so as to enable the Panel to determine that there is confusing similarity between those trademarks and the disputed domain name.5
The Panel determines that Complainant has rights in the word trademark PETPLAN (and PET PLAN) and the word and design mark PETPLAN INSURANCE, and that the disputed domain name is confusingly similar to Complainant's PETPLAN and PETPLAN INSURANCE trademarks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). 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". (Policy, paragraph 4(c))."
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, leaving the Panel without Respondent's explanation of the evidence presented by Complainant. The evidence shows that Respondent created a website using the disputed domain name which is headed in the English language using the terms constituting the disputed domain name, but for which the balance of the website is in the Spanish language. This suggests that Respondent was using the combination terms of Complainant's trademarks to attract Internet users based on search keywords, while not using those terms to inform visitors to the website who instead would be reading materials in the Spanish language. More important, although much of the information on the website appears to be generally useful information for pet owners that in isolation might be considered noncommercial, the website in fact in a fairly detailed way promotes a particular independent insurance agency (see Factual Background, supra). In referring to that specific agency, the identified web content author refers to the services "we" perform and to the independent agency as "our" agency, in each case indicating a possessor relationship with respect to the independent agency.
Respondent's use of the disputed domain name is "commercial", and promotes products from insurance providers other than Complainant. Respondent's use of Complainant's trademarks in the disputed domain name is neither "legitimate noncommercial" nor "fair" use. Respondent's use of Complainant's trademarks in the disputed domain name is misleading in the sense that Respondent appears to deliberately create the impression that it is merely providing interesting or useful information to pet owners, but in fact leads Internet users to its own services and to those of Complainant's competitors. To the Panel, such use does not appear to be "fair".
Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are:
"(i) circumstances indicating that [the respondent has] registered or [the respondent 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 [the respondent's] documented out-of-pocket costs directly related to the domain name;
(ii) [the 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 [the respondent has] engaged in a pattern of such conduct;
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
Complainant has provided evidence that Respondent registered the disputed domain name long after Complainant established rights in its trademarks, which are familiar to the consuming public in the relevant line of business, as established by Complainant. In addition, Respondent is intentionally using the disputed domain name for commercial gain to attract Internet users to its website by creating a likelihood of confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent's website. In view of this the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(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 name, <insurancepetplan.info> be transferred to the Complainant.
Frederick M. Abbott
Date: December 7, 2016
1 Translation by Panel, confirmed with Google translate, December 6, 2016.
2 The Panel in the circumstances here disregards the generic Top-Level Domain ("gTLD") ".info" for purposes of confusing similarity analysis within the meaning of the Policy.
3 See "www.merriam-webster.com/dictionary/pet", definition 2, accessed by Panel December 6, 2016.
4 See "www.merriam-webster.com/dictionary/plan", definition 4, "a detailed program (as for payment or the provision of some service) <pension plan>", accessed by Panel December 6, 2016.
5 Complainant has argued that because its PETPLAN trademark is "well-known" Internet users viewing the disputed domain name would assume that it was associated with Complainant. Complainant has provided evidence that its pet insurance business is highly regarded among at least the public in the field in which it operates. Complainant has not however provided evidence of actual Internet user confusion with respect to Respondent's website.