WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Whois Agent, Whois Privacy Protection Service, Inc./George Washere
Case No. D2016-2207
1. The Parties
The Complainant is Pet Plan Ltd of Guildford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States") / George Washere of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <gogetpetplan.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2016, 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 November 3, 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 November 3, 2016.
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 November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2016.
The Center appointed Isabelle Leroux as the sole panelist in this matter on December 7, 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 is a leading provider of pet insurance based in the United Kingdom. The Complainant provides pet insurance in the United Kingdom and around the globe through various licensees and currently in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. The Complainant was founded in 1976 and is now a subsidiary of Allianz Insurance plc.
The Complainant has continually operated its business under the Pet Plan name and owns trademark registrations for PETPLAN in various countries, including, by way of example, United Kingdom Trademark Registration Number 2052294 registered on January 17, 1997 (filed on January 19, 1996), for insurance services in class 36.
The Complainant owns various domain names incorporating its PETPLAN trademark, including <petplan.co.uk> and <petplan.com>.
The disputed domain name was registered on May 22, 2016.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
(a) The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it owns several PETPLAN trademarks. It says that when comparing the disputed domain name to the Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant’s trademarks.
The Complainant also submits that the addition of the generic, descriptive phrase “go get” as a prefix to its PETPLAN trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark and that the disputed domain name must be considered confusingly similar to the Complainant’s trademark.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and has not given the Respondent permission to use the Complainant’s trademarks. Nor, says the Complainant, is the Respondent commonly known by the disputed domain name.
According to the Complainant the disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests.
(c) The domain name was registered and is being used in bad faith.
The Complainant considers that the fact that the Respondent registered the disputed domain name well after the Complainant and its PETPLAN trademark became famous and well-known demonstrates that the Respondent registered the domain in bad faith, all the more as the Complainant and its PETPLAN trademark are known internationally. Since PETPLAN is so closely linked and associated with the Complainant, the Respondent’s use of this trademark, or any minor variation of it, strongly implies bad faith.
The Complainant further says that the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses.
Finally, at the time of initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity, which serves as further evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations for the mark PETPLAN in a number of jurisdictions worldwide.
The disputed domain name <gogetpetplan.com> wholly incorporates the Complainant’s PETPLAN trademark with the addition of the words “go get”. These additional words are generic, non-distinctive words.
Numerous panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the Complainant’s trademark (see Sanofi v. Roslyn Blowem / Blowem Inc, WIPO Case No. D2016-2081; F. Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. See also paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Further, it is well established in decisions under the Policy that the presence or absence of spaces or characters (e.g., hyphens, dots) in a domain name and indicators for country code Top-Level Domains (“ccTLDs”) or generic Top-Level Domains (“gTLDs”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name (see Sanofi v. Roslyn Blowem / Blowem Inc, supra, Pet Plan Ltd. v. Nigel Barnes, WIPO Case No. D2016-0029).
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark PETPLAN, pursuant to Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it owns the PETPLAN trademarks and that no permission was granted to the Respondent to use its PETPLAN trademark in the Respondent’s disputed domain name.
The Respondent did not provide a reply, so there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name.
Specifically, there is no evidence that the Respondent’s use of the domain name was in connection with a bona fide offering of goods or services. Indeed, the evidence provided by the Complainant suggests that no goods or services are offered on the website operated by the Respondent under the disputed domain name. Indeed said website only features sponsored links to third-party websites, some of which directly compete with the Complainant’s business.
Also, the registration of the Complainant’s trademark predates the registration of the disputed domain name, and there is no evidence that the Respondent has been commonly known by the disputed domain name.
Finally, there is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the domain name, without intent for commercial gain. On the contrary, the evidence provided by the Complainant suggests that the Respondent may receive pay-per-click fees from the linked websites that are listed on the disputed domain name’s website. This would constitute a use of the domain name for commercial gain as users of the Respondent’s website would have been misleadingly diverted to the website by the unauthorized and illegitimate use of the Complainant’s trademark to trade on its fame for commercial gain and profit (see Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990).
In light of the above and in the absence of any answer from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present matter, circumstances that are relevant are those indicating that the Respondent has registered the disputed domain name primarily for the purposes of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration, in excess of out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy).
The evidence provided by the Complainant shows that the Respondent is currently offering to sell the disputed domain name. On October 6, 2016 the disputed domain name was offered for sale at USD 4,259 and on November 3, 2016, i.e., after the Complaint was filed, it was offered for sale at USD 3,959 (Annex 2 of the Amended Complaint). Consequently it is clear that the Respondent has demonstrated his intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses.
Moreover, paragraph 4(b)(iv) of the Policy provides that the following circumstances shall also be evidence of bad faith: i.e., where the Respondent has registered and used a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
It is likely that the Respondent knew of the services sold under the Complainant’s PETPLAN trademark when it registered the disputed domain name. Indeed, the Complainant has been in business for numerous years and has been awarded several prizes (Annex 6 to the Amended Complaint) so that it has a high reputation in the field of pet insurances.
In addition, the Respondent creates a likelihood of confusion with the Complainant’s trademark by registering a domain name that has added the generic words “go get” to the said trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark and misleading users as to the source of the domain name and website. Indeed, the Respondent’s use of the disputed domain name to earn referral fees by linking to other websites attracts Internet users to the Respondent’s website by creating confusion as to source and results in commercial gain to the Respondent which is evidence of bad faith (PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).
Finally, the Respondent did not respond to the Complainant’s cease-and-desist letters sent before commencing the present proceeding and has not replied to the Complainant’s allegations in this proceeding. Such behavior may be further suggestive of bad faith in registering and using the disputed domain name.
For all the above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, pursuant to 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 <gogetpetplan.com> be transferred to the Complainant.
Date: December 21, 2016