WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Tulip Trading Company
Case No. D2016-2210
1. The Parties
The 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.
The Respondent is Tulip Trading Company of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <petplanplus.com> is registered with Key-Systems GmbH dba domaindiscount24.com (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 2, 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 Respondent1 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 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 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 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. On November 16, 2016 an email was received from the Respondent conveying its willingness to transfer the disputed domain name to the Complainant. On November 17, 2016, the Complainant forwarded a request for suspension of the proceeding to the Center. The proceeding was suspended the same day. On December 27, 2016, a request for reinstitution of the proceeding from the Complainant was received by the Center. The Center notified the Parties of the reinstitution of the proceeding and that all time periods were calculated from the reinstitution date. The new due date for Response was January 6, 2017. No formal Response was filed with the Center.
The Center appointed Andrea Mondini as the sole panelist in this matter on January 19, 2017. 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 operates a business providing pet insurance for domestic and exotic pets in the United Kingdom and numerous other countries.
The Complainant is the owner of several registrations for the trademark PETPLAN, including United Kingdom, Intellectual Property Office (“UKIPO”) trademark number 2052294 in class 36, registered on January 17, 1997; United States Patent and Trademark Office (“USPTO”), trademark number 3161569 in classes 6, 16, 25, 36 and 41, registered on October 24, 2006 and European Union Trade Mark (“EUTM”) registration number 0015111054 in classes 16, 25, 26, 35, 36, 41 and 44 registered on December 18, 2001.
The Respondent registered the disputed domain name on March 18, 2016. The disputed domain name resolves to a website containing pay-per-click (“PPC”) links to third-party websites, some of which offer competing products to those of the Complainant.
5. Parties’ Contentions
The Complainant contends in essence:
- That the disputed domain name <petplanplus.com> is identical or confusingly similar to its trademark PETPLAN since it captures the entirety of this trademark and simply adds the generic term “plus” which does not suffice to dispel confusing similarity;
- That the Respondent is not sponsored or affiliated in any way with the Complainant, nor commonly known by the disputed domain name;
- That the Complaint has not given to the Respondent permission to use the Complainant’s trademark in any manner;
- That the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business;
- That by registering the disputed domain name, the Respondent has demonstrated knowledge of the Complainant’s brand and business;
- That the Respondent is using the disputed domain name to attract unsuspecting Internet users looking for the Complainant’s services and to mislead them as to the source of the domain name and website and to capitalize on its fame and goodwill;
- That the Respondent has used a privacy service to hide its identity which is further evidence of bad faith registration and use.
The Respondent has not filed a formal response to the Complainant’s arguments and did not reply to the Complainant’s contentions in its email communication of November 16, 2016. While it would appear that the Respondent consents to the transfer of the disputed domain name to the Complainant, the Panel will, nevertheless, proceed to issue a decision on the merits.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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 shown that it is the holder of several registrations of the trademark PETPLAN in numerous jurisdictions. The disputed domain name captures the entirety of this trademark and adds the descriptive terms “plus”. In the Panel’s opinion, this does not suffice to dispel confusing similarity.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name once the complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the present case, the Respondent is not commonly known by the disputed domain name. Moreover, the Complainant has declared that it is not affiliated in any way with the Respondent and that it has not authorized the Respondent to use its trademark PETPLAN in any way. The Respondent has not contested these allegations. Moreover, for reasons set out below, the Panel finds that the Respondent’s use of the disputed domain name in connection with a PPC page does not amount to a bona fide offering of goods or services within the meaning of the Policy.
In the light of the Complainant having established an unrebutted prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The fact that the Respondent registered the disputed domain name which consists of the Complainant’s trademark with the addition of the descriptive word “plus”, indicates in the Panel’s opinion that the Respondent must have been aware of the Complainant’s brand and business and that it registered the disputed domain name to capitalize on its fame and goodwill. The Respondent has not denied this allegation. The evidence submitted by the Complainant shows that the Respondent has used the disputed domain name to direct Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. In the Panel’s opinion this constitutes use in bad faith. The fact that the Respondent has used a privacy service to hide its identity may be considered a further indication of bad faith.
Therefore, this Panel finds that the Respondent registered and used the disputed domain name in bad faith.
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 <petplanplus.com> be transferred to the Complainant.
Date: January 30, 2017
1 The original Complaint was filed against a privacy shield through which the disputed domain name was registered.