WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Steve Jaguden
Case No. D2017-1784
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 Steve Jaguden of East Northport, New York, United States of America ("United States").
2. The Domain Names and Registrar
The disputed domain names <edppetplan.com> and <keypetplan.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 18, 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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 16, 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 Complainant was founded in 1976 and is now a subsidiary of Allianz Insurance plc, part of the Allianz Global Group.
The Complainant is the owner of a number of registrations for the trademark PETPLAN in various jurisdictions, including but not limited to United States trademarks (figurative marks) for services in inter alia classes 36 and 44 and European Union Trade Marks (figurative marks) 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> and <petplan.co.uk>.
The Domain Names were registered by the Respondent on March 20, 2017. At the time of filing, the Domain Name <keypetplan.com> resolved to a registrar parking page with pay-per-click links to goods and services in competition with those of the Complainant. The Domain Name <edppetplan.com> now resolves to an inactive page.
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, 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 "www.petplan.com" and "www.petplan.co.uk". According to the 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 Names reproduce the Trademark. The Domain Names can be considered as capturing, in their entirety the Trademark and simply adding the generic term "key" and the letters "edp" at the beginning of the Trademark. Therefore, the Domain Names are 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 Trademark in any manner, including in domain names. The Respondent is not commonly known by the Domain Names.
The Respondent is using the Domain Names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with the Complainant's business (the "Websites"). Further, the Websites also feature links that directly reference the Complainant and its business. Presumably, the Respondent receives pay-per-click fees from the Websites.
The Respondent registered the Domain Names on March 20, 2017 which is well after the Complainant registered its Trademark.
The Complainant contacted the Respondent through a cease and desist letter sent by email. The Respondent replied stating it was not actively using the Domain Names and therefore violating the Trademark. The Respondent indicated that it legal team was "handling the inquiry" and subsequently went silent. The Complainant refers to the case Encyclopedia Britannica Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, in which the panel concluded that failure to positively respond to a demand letter provides "strong support for a determination of '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 essentially 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 letters "edp" and the term "key" do not suffice to distinguish the Domain Names from the Complainant's Trademark since "PETPLAN" is clearly recognizable in the Domain Names. 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.")
Thus, the Panel finds that the Domain Names are 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 Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names 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 Names (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 Names, 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 Names.
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 the 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 Names 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 Names 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 Names.
Finally, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Names 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 Names, other than the Respondent being aware of the Complainant and the Trademark. This is emphasized by the fact that the Websites behind the Domain Names appear to be parked pages that include:
pay-per-click advertising links that are related to the Complainant's business. For instance, the links on the Websites refer to insurance, including pet insurance. In particular, the reference to the Complainant and its business on the website behind the Domain Name <edppetplan.com> amounts to an attempt to illegitimately benefit from a likelihood of confusion between the Domain Names and the Complainant's Trademark.
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 Names by the Respondent is in bad faith.
In addition, in the Panel's view it contributes to a finding of bad faith that after initial email communication between the Complainant and the Respondent, the Respondent subsequently went silent.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are 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 Domain Names <edppetplan.com> and <keypetplan.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: October 27, 2017