WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Contact Privacy Inc. Customer 0141317355 / ICS Inc.
Case No. D2016-2214
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 First Respondent is Contact Privacy Inc. Customer 0141317355 of Toronto, Canada. The Second Respondent is ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom. Together, the First and Second Respondents are referred to as "Respondent" except where expressly indicated.
2. The Domain Name and Registrar
The disputed domain name <wwwgopetplan.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 1, 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 11, 2016. In accordance with the Rules, paragraph 5, the due date for a Response was December 1, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 2, 2016.
The Center appointed Jane Lambert 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 private company which was incorporated with limited liability in England and Wales in 1976. Its share capital has been acquired by Allianz Insurance plc which is part of the Allianz Global Group. The Complainant arranges insurance for domestic and exotic animals such as dogs, cats, rabbits, horses, reptiles, birds, and small mammals. It also offers insurance for pet care professionals and a pet finding service. The Complainant delivers those services in the United Kingdom under the PET PLAN brand and licenses companies in the United States of America, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands to supply similar services under that brand.
The Complainant has registered the words PET PLAN and PETPLAN as trade marks in a number of countries for a wide range of goods and services in classes 6, 16, 18, 25, 35, 36, 41, 42 and 44. For the purpose of these proceedings it is necessary to mention only one of those registrations, namely the registration of the word PETPAN for such goods and services in the United Kingdom, registered on April 6, 2001 under registration number 2222270.
The First Respondent operates a privacy service and holds the dispute domain name for the benefit of the Second Respondent. Except for identifying the Second Respondent as the person on whose behalf it holds such domain name, the First Respondent has played no part in these proceedings.
Very little is known of the Second Respondent other than the particulars provided by the First Respondent. Its name suggests that it is a corporation of some kind but it is not clear where, if at all, it has been incorporated.
According to the Complainant, the Respondent is not sponsored by, or affiliated with, the Complainant in any way. The Complainant says that the Respondent has no permission to use any of its trade marks in any manner, and certainly not to register the disputed domain name. The Complainant has exhibited to its Complaint evidence that the Respondent has registered domain names that are similar to the trade marks of other well-known companies and that it has been a respondent in other domain name disputes.
When the disputed domain name is typed into a browser, a page with a list of click through links appears some of which lead to businesses that compete directly with the Complainant. For instance, one of those links appears under the words "Pet Insurance". Upon clicking that link, a page with the following words appears:
Vets Fees Up To £4,000 & 45% Off. Get A Quote On Your Mobile Today.
Lifetime Pet Cover
Award Winner 2016"
The URL is the website of The Equine and Livestock Insurance Company Limited which appears to be a competitor of the Complainant. An orange flash in the right hand corner of the holding page states that the disputed domain name is for sale and provides a number in North America for enquiries.
Also exhibited to the Complaint are letters from the Complainant dated May 16 and June 6, 2016 neither of which appears to have been acknowledged or answered.
5. Parties' Contentions
The Complainant claims the transfer of the disputed domain name on the grounds that:
(1) The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of that domain name; and
(3) The Respondent has registered and used the disputed domain name in bad faith.
As to the first ground, the Complainant refers to its many trade mark registrations around the world as evidence of its rights in the PETPLAN mark. Citing Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 and Pet Plan Ltd. v. Nigel Barnes, WIPO Case No. D2016-0029. The Complainant submits that the ".com" suffix and the letters "wwwgo" should be disregarded. The similarity between what is left and any of the Complainant's trade marks is clear.
In respect of the second ground, the Complainant argues that the mere registration of PETPLAN as a trade mark in so many registries around the world indicates that the Complainant has an exclusive right to that mark. The use of the same or similar mark by anyone else would amount to trade mark infringement or passing off. The Complainant adds that the Respondent has no connection with the Complainant and that it is not licensed to use any of its marks.
With regard to the third ground, the Complainant contends that the circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (who is the owner of the PETPLAN trade marks) or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. Further, or alternatively, the Complainant says the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that it has engaged in a pattern of such conduct. Further or in the further alternative, the Complainant argues that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant further submits that the Respondent's use of a privacy service and its failure to respond to letters before claim betoken bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent as 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.
In the administrative proceeding, the Complainant must prove that each and every one of those three elements is present.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant's trade mark is encapsulated within the disputed domain name. With predictive text and the propensity of modern smart phones and tablets to regurgitate frequently visited URLs such as Google's or just part of that word like the letters "go", it is easy to see how the word "wwwgopetplan.com" could be entered into a browser. It is just the sort of mistake that a frazzled pet owner might easily make when visiting a breeder, vet or pet shop. It is likely that the disputed domain name was intended to take advantage of such a mistake. Even if it was not, it was a consequence that was reasonably foreseeable and could and should have been foreseen.
B. Rights or Legitimate Interests
The Panel finds the second element is present.
The Respondent's corporate name is nothing like the disputed domain name and it would be difficult for anyone other than the Complainant to trade under the Complainant's trade marks without the Complainant's licence. The Complaint makes clear that the Complainant has not licensed the Respondent to use its trade marks and there is nothing in the materials before the Panel to suggest otherwise. Paragraph 4(c) of the Policy lists a number of circumstances that might indicate that a respondent enjoys a right or legitimate interest in a domain name. There is no evidence that any of those circumstances applies.
C. Registered and Used in Bad Faith
The Panel finds the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is listed in sub-paragraph (iv):
"[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Respondent has used the disputed domain name for a landing page consisting of sponsored links. A fee is generated whenever an Internet user clicks one of those links, constituting "commercial gain". The Panel has already found that the disputed domain name is confusingly similar to the Complainant's mark and that it was calculated or expected to attract users to the Respondent's website. All the circumstances of sub-paragraph (iv) are therefore present. There is therefore evidence of registration and use in bad faith.
The Panel has considered whether the circumstances set out in sub-paragraphs (i) and (ii) apply. The appearance of the orange for sale flash certainly suggests that sub-paragraph (i) might apply though there is no indication of the price that the Second Respondent would accept or the costs that it has occurred. As for sub-paragraph (ii), the Panel finds that the Complainant is not prevented from registering a domain name that corresponds to its trade mark.
The Panel has also considered whether the use of a privacy service and failure to respond to letters before claim constitute registration and use in bad faith but is not persuaded that they do in the present circumstances.
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 <wwwgopetplan.com> be transferred to the Complainant.
Date: December 21, 2016