WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Contact Privacy Inc. Customer 1241987460/Contact Privacy Inc. Customer 1241987460 / Greg Wiatt
Case No. D2018-0974
1. The Parties
The Complainant is Pet Plan Ltd. of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1241987460 of Toronto, Ontario, Canada / Greg Wiatt of Southpark, Prescott, Arizona, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <cbdpetplan.com> is registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, 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 May 8, 2018 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 May 10, 2018.
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 May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2018.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 14, 2018. 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 the registered owner of the PETPLAN trademark in a number of jurisdictions. The Complainant uses the PETPLAN trademark in relation to the supply of domestic pet insurance products. The PETPLAN trademark is registered in a number of jurisdictions, including Canadian Intellectual Property Office (“CIPO”) registration No. TMA463628 registered in 1996 for class 36; and TMA592526 registered in 2003 for classes 16, 25, 26, 35, 36, 38, 40, 41, 42, and 44; US trademark No. 3161569 registered in 2006 for classes 6, 16, 25, 36, 41; UK trademark No. 2052294 registered in 1997 for class 36; UK trademark No. 2222270 registered in 2001 for classes 6, 16, 25, 35, 36, 41, 42, 45 and UK trademark No. 2645992 registered in 2013 for classes 6, 16, 18, 35, 36, 41, 44; European Union Trademark(“EUTM”) No. 000328492 registered in 2000 for class 36, and EUTM No. 001511054 registered in 2001 for classes 16, 25, 26, 35, 36, 41, 42. The Complainant has a strong presence on the Internet. The UK website “www.petplan.co.uk” receives almost 400,000 hits each month and “www.petplan.com” receives an additional 21,000 hits per month.
The disputed domain name was registered on December 2, 2017.
The disputed domain name resolves to a blank page.
5. Parties’ Contentions
The Complainant provides domestic pet insurance in a number of jurisdictions by reference to its PETPLAN trademark and has done so for over 20 years. The Complainant contends that the trademark at issue is distinctive and that its registration in a number of jurisdictions indicates this to be the case. The Complainant has won numerous awards including the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance winner from 2008 - 2016, World Branding Awards – Brand of the Year 2017-2018, and the Consumer MoneyWise Awards - Most Trusted Pet Insurance Provider in 2017.
The Complainant maintains that it and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 1997, which, as the Complainant points out, significantly postdates the Respondent’s registration of the disputed domain name on December 2, 2017. The Complainant is also licensed in numerous countries and points out that it is consistently ranked the number one pet insurance provider in the UK.
According to the Complainant, the disputed domain name captures the PETPLAN trademark in its entirety. The mere addition of the generic term CBD to the trademark does not negate confusing similarity. According to the Complainant it is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy, paragraph 4(a)(i).
The Complainant says that the granting of registrations by CIPO, USPTO, UKIPO, the European Union Intellectual Property Office (EUIPO), and the Australian Trademark Office (IP Australia) for the PETPLAN trademark is prima facie evidence of validity, of the Complainant’s ownership, and of the Complainant’s exclusive right to use PETPLAN in commerce on or in connection with the goods and/or services specified in the registration certificates.
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way, and that the Complainant has not given permission to use its trademarks in any manner, including in domain names. The Respondent Greg Wyatt is not commonly known by the disputed domain name, which, according to the Complainant, evinces a lack of rights or legitimate interests.
According to the Complainant, the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. The Respondent has not made any use of the website to which the disputed domain name resolves and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests, or so the Complainant says.
Further, the Respondent registered the disputed domain name on December 2, 2017, which is significantly after the Complainant filed for registration of its PETPLAN trademark with the UKIPO in 1997, EUIPO in 2000 and the USPTO in 2006. The Complainant also asserts that the disputed domain name was registered long after its PETPLAN mark became, as it says, famous, which indicates bad faith.
Past UDRP panels have noted, according to the Complainant, that the word bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of the Respondent – passively holding a domain name can constitute a factor in finding bad faith registration and use. The Complainant points out that in this matter the disputed domain name is confusingly similar to the Complainant’s trademarks, and the Respondent has made no use of it, factors indicative of bad faith registration and use.
The Complainant advised the Respondent that the unauthorized use of the PETPLAN trademark violated the Complainant’s rights and requested voluntary transfer. However, the Complainant received no response. The Complainant points out that the Respondent could have used this opportunity to justify proposed good faith use but chose not to, which further indicates bad faith use.
The Complainant concludes that in the circumstances, the Respondent should be found to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s PETPLAN trademark. However, the trademark has been adopted and incorporated in its entirety. The mere addition of the letters “cbd” which could be interpreted as indicating a location or some other abbreviation, does not detract from a finding of confusing similarity in the circumstances. The Complainant’s trademark is immediately recognisable and prominent in the disputed domain name, and its combination with “cbd” does not give it a new or different meaning, or result in the formation of some other term with its own distinct and inherent significance.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark.
B. Rights or Legitimate Interests
There is nothing before the Panel that indicates that the Respondent has any rights or legitimate interests in the disputed domain name, either inherently or by reference to some website to which the disputed domain name might resolve. In fact the disputed domain name resolves to a blank page and there is thus no evidence of any activity in relation to it that could form a basis for any identification of rights or legitimate interests. The Respondent is not known by the disputed domain name or anything resembling it, has not responded to the complaint to put any evidence before the Panel and did not respond to the cease and desist communication of the Complainant. The Complainant’s products and services are well established in the pet insurance market with reference to its registered and distinctive mark PETPLAN. The Respondent has not been licensed or authorised by the trademark owner in any manner.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has a long established multi-jurisdictional domestic pet insurance business which it badges with the PETPLAN trademark, which is registered in a substantial number of jurisdictions. It is a significant provider of domestic pet insurance. It is in the circumstances wholly improbable that the Respondent would register a domain name incorporating the PETPLAN trademark in ignorance of the Complainant’s business by reference to that mark and its exclusive legal rights in it. The addition of the letters “cbd” further tends to indicate a deliberate and conscious acquisition by the Respondent of a domain name incorporating a distinctive trademark to which it was known the Respondent could make no legitimate claim. The passivity and limited nature of the use of the disputed domain name is no bar against a finding of bad faith, as acquiring a domain name which incorporates a distinctive trademark in which another party holds exclusive rights can hardly lend itself to any good faith use. In any case Panel jurisprudence on this point is well established.
Therefore the Panel holds that the Respondent has 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 <cbdpetplan.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: June 27, 2018