WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Pamela Garcia
Case No. D2017-1731
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 Pamela Garcia of Trimport, Germany.
2. The Domain Name and Registrar
The disputed domain name <ourpetplanbreeder.com> (the “Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 6, 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 following facts are undisputed.
The Complainant provides pet insurance for domestic and exotic pets in the United Kingdom and around the world through various licensees operating under the name Petplan. The company was founded in 1976 and is now a subsidiary of Allianz Insurance plc, part of the Allianz Global Group.
The Complaint is the owner of a number of registrations for the trademark PETPLAN in various jurisdictions, including but not limited to United Kingdom trademarks (figurative mark) for services in inter alia classes 36 and 44 and European Union Trade Marks (figurative mark) including such mark with registration number 001511054, applied for on February 16, 2000, and registered on December 18, 2001 for goods and services in classes 16, 25, 26, 35, 36, 41 and 42 (hereinafter collectively referred to as the “Trademark”).
Furthermore, the Complainant owns and operates websites at several domain names incorporating the Trademark, for instance <petplan.com>, <petplan.co.uk> and <petplanbreeder.co.uk>.
The Domain Name was registered by the Respondent on April 25, 2017. The Domain Name redirects to a blank page that lacks content (the “Website”).
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
Under the Trademark, the Complainant offers a wide range of pet insurance products. These products range from individual policies for a dog/puppy, cat/kitten, rabbit, horse or other exotic pet to insurance for anyone in the business of pet care. PETPLAN is a distinctive and well-known mark used by the Complainant in connection with pet insurance for over 20 years. The Complainant has won numerous awards including the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance winner from 2008-2013 and most recently the Consumer Moneyfacts Awards – Highly Commended in 2014.
Petplan has a strong Internet presence through its websites <petplan.com>, <petplan.co.uk> and <petplanbreeder.co.uk>. According to Complainant’s DNS provider, <petplan.com> receives an additional 21,000 hits per month and <petplan.co.uk> receives almost 400,000 hits each month.
The Domain Name reproduces the Trademark. The words ‘‘our’’ and “breeder” are generic, descriptive and closely linked and associated with the Complainants business activities. Therefore, the Domain Name is identical or confusingly similar to the Trademark.
The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the Disputed Domain Name. The Domain Name redirects to a blank page that lacks content.
The Respondent registered the Domain Name on April 25, 2017 which is well after the Complainant registered its Trademark. The fact that the Respondent registered the Disputed Domain Name well after the Complainant and its Trademark became famous and well-known demonstrates that the Respondent registered the Domain Name in bad faith.
In addition, the Complainant has brought forward that passively holding a domain name can constitute a factor in finding bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark. The various registrations for the Trademark consist of the word PETPLAN combined with graphic elements.
In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element.
On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity.
The Panel takes into account, in line with section 1.7 of the WIPO Overview 3.0, that the first element functions as a standing requirement which involves a straight forward comparison between the trademark and the domain name
The Panel finds that the addition of the terms “our” and “breeders” do not prevent a finding of confusing similarity “PETPLAN” recognisable in the Domain Name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”) The Panel finds that the addition of the term “breeders’” may even add to confusing similarity, since this term relates to the services provided by the Complainant, namely insurance services for inter alia pet breeders.
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
In the case at hand, the Panel has considered for its assessment of the second and third element that the textual components of the Trademark consist of only dictionary terms and that prima facie PETPLAN may have been ab initio descriptive for the services offered under the Trademark. However, as the Complainant contended and substantiated that PETPLAN has become a distinctive and well-known mark used by Complainant in connection with pet insurance for over 20 years, the Panel will accept in this matter this contention as a given fact, also in light of the lack of a Response.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Petplan” is the Respondent’s name or that the Respondent is commonly known as “Petplan”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark. This is emphasized by the fact that the Domain Name incorporates the term “breeder” a term that relates to the business activities of the Complainant. In the Panel’s view it also contributes to the finding of bad faith that the Domain Name is highly similar to the domain name <petplanbreeder.co.uk> that is owned by the Complainant.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
In addition, in the Panel’s view it contributes to a finding of bad faith that the Respondent did not reply to any of the three cease-and-desist letters sent by the Complainant.
It should be noted that the Center has contacted the Respondent using several methods of communication. The notification sent by courier was unsuccessful as a result of the fact that the street address of the Respondent does not exist. The Panel conducted an Internet search into the address as mentioned in the WhoIs details of the Domain Name and has come to the conclusion that the addresses appears to be non-existent.
All of the above contributes to a finding of bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used 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 <ourpetplanbreeder.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: October 17, 2017