WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Registration Private, Domains By Proxy, LLC / Nicholas Maddalena
Case No. D2017-0839
1. The Parties
The Complainant is Pet Plan Ltd. of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (“Unioted Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Nicholas Maddalena of Chowchilla, California, United States of America represented by Self-Represented.
2. The Domain Name and Registrar
The disputed domain name <bestpetplans.com> 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 April 25, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2017, 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 April 27, 2017 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 April 28, 2017.
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 May 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2017. Apart from two informal emails from the Respondent, no formal Response was filed with the Center.
An email was received from the Respondent on May 17, 2017, apologizing for any inconvenience caused and stating he had never heard of the Complainant at the time it registered the disputed domain name. The Complainant emailed the Respondent on May 18, 2017 requesting Respondent confirm whether he was willing to agree to transfer of the disputed domain name and if so, the Complainant would request a suspension of the proceeding in order to settle the matter. On May 19, 2017 the Respondent replied stating it had released the disputed domain name and no longer owned the domain name. Further stating that if the Complainant needed further action to email the Respondent at its email address and he would take care of it.
The Complainant filed a request for suspension on May 22, 2017. The proceedings were suspended on May 23, 2017. The Respondent did not sign the standard settlement form. The Complainant requested the re-institution of the proceedings on June 19, 2017. On June 22, 2017, the Center informed the parties that proceeding had been reinstituted as of June 19, 2017 and that as the response due date had already passed the Center will proceed to Panel appointment.
The Center appointed Martine Dehaut as the sole panelist in this matter on July 3, 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, Pet Plan Ltd, located in the United Kingdom, was founded in 1976 and has operated continuously under that name to provide pet insurance as well as insurance to pet care professionals and pet finding services in the United Kingdom and all over the world through various licensees.
According to Complainant, PET PLAN is a well-known Trademark used for pet insurance for well over 15 years. The Complainant states that it is the number one pet insurance provider and that it won numerous awards including the “Your Dog Best Pet Insurance” and “Your Cat Best Pet Insurance” awards from 2008 to 2013. More recently, the Consumer Moneyfacts Awards - Highly Commended in 2014 and the Animal Charity Awards in association with ADCH in 2016.
The Trademark PETPLAN, either as a word or figurative mark is registered in numerous jurisdictions around the world. Among the Trademark registrations listed by the Complainant, are the following:
United Kingdom Trademark registration n° 2052294 filed on January 19, 1996 and registered on January 17, 1997 in class 36 for insurance services relating to pets.
United Kingdom Trademark registration n° 22222710 filed on February 14, 2000 and registered on April 6, 2001 in classes 6, 16, 25, 35, 36, 41, 42, 45.
United Kingdom Trademark registration n° 2645992 filed on December 14, 2012 and registered on June 14, 2013 in classes 6, 16, 18, 35, 36, 41, 44.
European Union Trademark n° 000328492 filed on November 7, 1996 and registered October 16, 2000 in class 36.
European Union Trademark n° 011470465 filed on February 16, 2000 and registered on December 18, 2001 in classes 16, 25, 26, 35, 36, 41, 42.
European Union Trademark n° 001511054 filed on January 1, 2013 and registered on July 12, 2013 in classes 06, 16, 18, 35, 36, 41, 42, 44.
Canadian Trademark n° TMA463628 filed on July 31, 1987 and registered on September 27, 1996.
United States Trademark n° 452 4285 filed on January 8, 2013 and registered on May 6, 2014 in classes 6, 16, 18, 35, 36, 41, 44.
The Complainant is also the owner of numerous domain names incorporating the Trademark PET PLAN such as <petplan.co.uk>, <petplan.com>, <petplaninsurance.org>, <mypetplan.co>, <thepetplan.com>.
In light of the information provided by the Complainant’s DNS provider, the Complainant’s website operating under the address “www. petplan.co.uk” receives almost 400,000 hits each month and the website address “www.petplan.com” about 21,000 visits per month.
The disputed domain name was registered on November 20, 2016 and resolves to the Registrar’s parking website displaying pay-per-click links. When it registered the disputed domain name <bestpetplans.com>, the Respondent used a WhoIs privacy service to hide its identity, which had been later disclosed as Nicholas Maddalena with an address in California, United States.
The Complainant sent several cease and desist letters to the Respondent aiming to amicably settle the case by the transfer of the disputed domain name. While the Respondent, upon receiving the first cease and desist letter seemed to be ready to reach an amicable solution, he never gave any effect to his intentions.
Consequently, the Complainant decided to file the present Complaint.
5. Parties’ Contentions
The Complainant having submitted a list of the Trademark registrations and domain names that it owns, it contends that the disputed domain name <bestpetplans.com> is confusingly similar to its Trademarks to the extent that it incorporates entirely PETPLAN. The mere addition of the generic and laudatory term “best” and its use in a plural form is not likely to overcome a finding of confusing similarity. On the contrary, according to the Complainant, the laudatory term “best” suggests the quality of the services provided and is likely to unduly evoke the industry awards won by the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way and has never been authorized to register or to use the disputed domain name.
Furthermore, the Complainant contends that the Respondent is not commonly known by the disputed domain name. Regarding this issue, the Complainant notes that the publicly available WhoIs record for the disputed domain name does not contain any reference to that name. The Complainant points out that the Respondent used a Private Service to register the disputed domain name and that in any case, it is not identified by the disputed domain name.
The Complainant asserts that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as the disputed domain name resolves to a parked website featuring links to third party websites, some of which directly compete with the Complainant’s business. The Complainant claims further that the disputed domain name was registered and used in bad faith. In support for such an allegation, the Complainant points out that the Respondent used a Privacy Service in order to hide its identity when it registered the disputed domain name. Furthermore, given the worldwide reputation of the Trademark PETPLAN in relation to insurance services for pets, and its longstanding use, the Complainant deem it obvious that the Respondent knew or at least should have known, of the existence of the Complainant’s Trademark.
The Complainant finally contends that the presence of third-party pay-per clicks links at the disputed domain name is a further evidence of the Respondent’s bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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
As stated in the Complaint, the Complainant is the owner of numerous Trademark registrations and domain names consisting in the sign PETPLAN. The disputed domain name <bestpetplans.com> entirely incorporates the Complainant’s Trademark. The adverb “best” is merely of a laudatory nature and consequently is not likely to avoid a finding of confusing similarity. On the contrary, it reinforces the risk of confusion as it conveys a message of quality suggesting the awards won by the Complainant. Besides, as noted by the Complainant, the plural form given to the disputed domain name would not serve to distinguish the disputed domain name and is not likely to avoid any confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the policy.
B. Rights or Legitimate Interests
The Panel is of the opinion, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain name as admitted by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) section 2.1.
Accordingly, as stated above, the Panel notes that no authorization has been given to the Respondent to use Complainant’s Trademarks in any manner and that it is not sponsored by or affiliated with the Complainant. Besides, there is no evidence that the Respondent is commonly known by the disputed domain name. Indeed, the Respondent has failed to submit any reply likely to deny the Complainant’s allegations on this issue. Moreover, the Panel notes that the Respondent, when it answered to the Complainant’s first Cease and Desist letter did not mention any rights or circumstances likely to support the registration and the use of the disputed domain name.
On the contrary, the use of the disputed domain name to direct the Internet users to a parking page displaying links to third party websites among which those of competitors cannot be regarded as a bona fide offering of goods and services. As duly noted by the Complainant, the pay-per-clicks links found at the disputed domain name, would be the result either of the Respondent’s inactive, non-use of the disputed domain name or at worst an attempt to use it for commercial gain by taking advantage of the reputation of the Complainant’s Trademarks and domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Taking into account the following circumstances and evidence:
- The reputation of the Complainant’s Trademark PETPLAN and its longstanding use throughout the world in relation to pet insurance,
- The numerous Trademark registrations owned by the Complainant worldwide including United States registrations, jurisdiction where the Respondent is located,
- The use of a Privacy Service to register the disputed domain name and its redirection to a parking page displaying links a competitor’s website,
- The absence of any reply from the Respondent to the Complaint and the various attempts of the Complainant to amicably reach an amicable solution.
The Panel takes the view that the Respondent knew or at least should have known the Complainant’s Trademarks. Besides the here-above-mentioned circumstances evidence that the Respondent, while hiding his identity, attempted to attract Internet users for commercial gain by creating a likelihood of confusion, the finding of bad faith registration and use is therefore justified.
Accordingly, the Panel finds that requirements under paragraph 4(a)(iii) are satisfied.
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 <bestpetplans.com> be transferred to the Complainant.
Date: July 17, 2017