WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd. v. Loren Nations, Veterinary Healthcare Associates
Case No. D2018-1039
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 Loren Nations, Veterinary Healthcare Associates of Winter Haven, Florida, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <healthypetsplans.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 May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, 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 May 18, 2018. On May 23, 2018, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2018.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 18, 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") trademark No. TMA463628 for PET PLAN, registered on September 27, 1996 in class 36, and CIPO trademark No. TMA592526 for PET PLAN, registered on October 17, 2003 for classes 16, 25, 26, 35, 36, 38, 40, 41, 42, and 44; United States trademark No. 3161569 for PET PLAN, registered on October 24, 2006 for classes 6, 16, 25, 36, 41; United Kingdom trademark No. 2052294 for PETPLAN, registered on January 17, 1997 for class 36, United Kingdom trademark No. 2222270 for PETPLAN, registered on April 6, 2001 for classes 6, 16, 25, 35, 36, 41, 42, 45 and United Kingdom trademark No. 2645992 for PETPLAN, registered on June 14, 2013 for classes 6, 16, 18, 35, 36, 41, 44; and European Union Trademark("EUTM") No. 000328492 for PETPLAN, registered on October 16, 2000 for class 36, and EUTM No. 001511054 for PETPLAN, registered in 2001 for classes 16, 25, 26, 35, 36, 41, 42. The Complainant has a strong presence on the Internet. The United Kingdom 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 September 15, 2011.
The disputed domain name resolves to a page where the words "Healthy Pets Plans" appear, under which the terms "Veterinary Wellness" appear in a different font and script. The phrase "Offering you a healthy plan for your pet's needs" also appears together with a stylised representation of a pet's pawprint and a contact button.
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 predates the Respondent's registration of the disputed domain name on September 15, 2011. The Complainant is also licensed in numerous countries and points out that it is consistently ranked the number one pet insurance provider in the United Kingdom.
The Complainant contends that the disputed domain name is confusingly similar to its PETPLAN trademark. The Respondent has merely added an "s" to the end and has also incorporated a generic and descriptive term, that being the word "healthy". The Complainant specifically points out that in its view, the term "healthy" is a generic term common in the insurance industry and combined with a minor typo of Complainant's PETPLAN trademark, exemplifies the Respondent's attempt to mislead and deceive customers.
The Complainant points to previous Panel decisions that hold that the addition of a generic term, and of the letter "s" to indicate the plural of a term incorporated in a trademark, is not sufficient to escape a determination of confusing similarity. It says the essence of the registered mark remains and the meaning is not changed. Also adding to the confusion, according to the Complainant, is that, as the Complainant asserts, the Respondent is using the disputed domain name to refer Internet users to competing pet insurance products from the website to which the disputed domain name resolves.
The Complainant also points out that the Respondent is not licensed or authorised to use its PETPLAN trademark in any manner or incorporate it in a domain name. The Respondent is said not to be known by the disputed domain name. Furthermore, the Complainant contends that Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. On the website to which the disputed domain name resolves, the Respondent is said to offer and attempt to sell products that directly compete with the Complainant's own. The Complainant also points out that the Respondent registered the disputed domain name on September 15, 2011, significantly after the Complainant's registration of its <petplan.co.uk> domain on August 1, 1996 and its <petplan.com> domain name, acquired in early 2006.
The Complainant maintains that the fact that the disputed domain name was registered on September 15, 2011, well after the PETPLAN trademark was registered and became, in its submission, famous, demonstrates bad faith. The Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant again points out that it has marketed and sold its goods and services using the PETPLAN trademark since 1997.
The Complainant says that at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant points out that in addition to its longtime use of its PETPLAN trademark, it has won numerous awards including Consumer Moneyfacts Awards – Highly Commended (2014), Your Dog Best Pet Insurance 2013 – Winner, and your Cat Best Pet Insurance 2013 – Winner, which demonstrates the Complainant's fame.
The Complainant contends that in the circumstances the Respondent should be considered to have actual notice of the Complainant's marks, and thus has registered the domain in bad faith, because the Complainant's mark is well known and the circumstances support such a finding.
The Respondent has registered a confusingly similar domain name comprised of the Complainant's PETPLAN trademark along with the additions of the letter "s" and the generic term "healthy". The Complainant contends that the offer of "a healthy plan for your pet's needs" at the website to which the disputed domain name resolves, suggests a service or product which competes directly with the Complainant's own. The Complainant contends that the impression given would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not. The Complainant says that the Respondent's actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and the Respondent is thus using the fame of the Complainant's trademarks to improperly increase traffic for its own commercial gain. It is well established that such conduct constitutes bad faith, according to the Complainant.
Finally, the Complainant says that the Respondent has ignored attempts to resolve this dispute outside of this administrative proceeding, which may properly be considered a factor in finding bad faith registration and use of a domain name.
The Respondent did not file a formal Response. However, in an email to the Center purporting to be from a bookkeeper for the Respondent, the latter sought to explain that the disputed domain name was acquired for an innocent purpose, i.e., to enhance the programs used at a veterinary hospital but that these plans had not come to fruition. There was said never to have been any intention of confusing anyone or infringing upon any trademarks.
The correspondent also asked whether the Complainant might wish to buy the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the PETPLAN trademark. The question is thus whether it is confusingly similar. The addition of a dictionary term to a trademark has commonly been held not to be sufficient to distinguish or disassociate a disputed domain name from a trademark belonging to a party unrelated to the registrant. In this case, the term "healthy" has been inserted. The addition of this term suggests a plan for the general health of a pet, which will commonly also include insuring against adverse developments in that regard. Also, the words "pet" and "plan" have been rendered in the plural. This takes the disputed domain name a short distance away from the more concise PETPLAN mark. However, individually the addition of an "s" has also been held not to take a disputed domain name beyond the range of confusing similarity. The standard to be applied by UDRP panels is that the Complainant's trademark be recognisable in the disputed domain name. Here the trademark PETPLAN has acquired a strong reputation and become very distinctive in the eyes of consumers in a number of jurisdictions. In the presence of minor modifications to that mark (the pluralisation) and the addition of a dictionary term which is in any case associated with the services offered by the Complainant (insurance against medical expenses) the disputed domain name falls within the sphere of confusing similarity with the PETPLAN trademark of the Complainant.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's PETPLAN trademark.
B. Rights or Legitimate Interests
In this matter there is no evidence that the Respondent has offered any pet insurance products from the website to which the disputed domain name resolves, nor has it provided any hyperlinks to such services or products on the website. However, the similarity between the disputed domain name, and the fact that the Respondent says that its business is concerned with veterinary services, indicate that the Respondent was likely aware of the PETPLAN trademark at the time the disputed domain name was registered. It therefore must have had actual or constructive knowledge of the Complainant's reputation and thus legal interests in that mark. The Respondent indicates that it intended to use the disputed domain name to enhance programs at a veterinary surgery. However, these plans have not been put into effect although the disputed domain name was registered in 2011, and there is no indication that they are to be realised. The offer to sell the disputed domain name back to the Complainant is not an indication per se of bad faith. However, once it was made aware of the present proceeding, the Respondent sought to effect a sale with alacrity, in the absence of any demonstrable rights or legitimate interests in the disputed domain name, and most probably with full understanding of the Complainant's rights in the trademark PETPLAN. The Panel has already held that the disputed domain name is confusingly similar to that mark.
The Complainant did not authorise the Respondent to use its trademark in any manner, and the Respondent is not known by the disputed domain name nor does it do business under that name.
Therefore the Panel holds that the Complainant has met its burden on this element.
C. Registered and Used in Bad Faith
By way of its correspondence and its apparent association with a veterinary surgery, the Respondent makes it clear that it is very familiar with the pet business and therefore it is highly likely that the Respondent was aware of the Complainant's PETPLAN trademark and reputation in the pet insurance business at the time the disputed domain name was registered. The composition of the disputed domain name indicates that as well. In those circumstances it is most likely that the choice of domain name, with its slight variation through pluralisation and the addition of the term "health", is in the manner of a clever attempt to acquire the benefit of the reputation the Complainant has established in its PETPLAN mark. The Respondent has also established a website by reference to the disputed domain name, which has as its most likely object the disguising of the real purpose of its acquisition. That real purpose has, on balance, become apparent in the correspondence with the Center, in which the Respondent sought to sell the disputed domain name back to the Complainant. The supposed plans to enhance programs at the veterinary surgery which the Respondent is said to operate have never been put into effect and there is no indication that they will be. The disputed domain name has in any case no clear or distinct connection with the Respondent's apparent business, the Respondent's name or any brand or mark used legitimately by the Respondent.
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 <healthypetsplans.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: July 2, 2018