WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. On behalf of pet-plan-claim-form.com owner, Whois Privacy Service / Vadim Yasinovsky, PDFfiller inc.
Case No. D2018-1943
1. The Parties
Complainant is Pet Plan Ltd of Guildford, United Kingdom of Great Britain of Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is On behalf of pet-plan-claim-form.com owner, Whois Privacy Service of Seattle, Washington, United States of America (“United States”) / Vadim Yasinovsky, PDFfiller inc. of Brookline, Massachusetts, United States.
2. The Domain Name and Registrar
The disputed domain name <pet-plan-claim-form.com> is registered with Amazon Registrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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 Complainant on September 3, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 5, 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 Respondent of the Complaint, and the proceedings commenced on September 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on October 12, 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
According to the Complaint, Complainant provides pet insurance products and services for domestic and exotic pets around the globe. It is licensed in the United States, Canada, Australia, New Zealand, Brazil, Germany and the Netherlands. It is now a subsidiary of Allianz Insurance, part of the Allianz Global Group. As per the Complaint, Complainant has marketed and sold its goods and services using the PETPLAN trademark since 1997 and is known under this trademark internationally in connection with pet insurance. Complainant operates also the websites “www.petplan.com” and “www.petplan.co.uk”.
Complainant holds numerous trademark registrations for the PETPLAN mark, including the United States trademark registration No. 3,161,569, filed on August 26, 2004, registered on October 24, 2006 for services, inter alia, in International classes 36 and 41; the European Union trademark registration No. 000328492, filed on July 11, 1996, registered on October 16, 2000, for services in International class 36; and United Kingdom trademark registration No. 2052294, filed on January 19, 1996, registered on January 17, 1997, for services in International class 36.
The Domain Name was registered on February 14, 2018 and resolves to a website which contains multiple links to Complainant’s competitors, as well as reference to Complainant’s PETPLAN trademark, inviting visitors to “(f)ind an appropriate Pet Plan Claim Form” and to send them, as per Complaint, through various links to the commercial website “www.pdffiller.com”.
On April 3, 2018, April 13, 2018 and April 23, 2018, Complainant sent cease and desist letters to Respondent to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has demonstrated rights through registration and use on the PETPLAN mark.
The Panel finds that the Domain Name <pet-plan-claim-form.com> is confusingly similar to the PETPLAN trademark of Complainant.
The Domain Name incorporates the trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The words “claim-form” which are added in the Domain Name do not avoid a finding of confusing similarity as they are non-distinctive terms (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin , WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The addition of hyphens “-” between the words in the “pet-plan-claim-form” portion of the Domain Name is also immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).
The generic top-level domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
Complainant demonstrated that the Domain Name resolves to a website which contains multiple links to Complainant’s competitors, as well as reference to Complainant’s PETPLAN trademark. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry competitors (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403). The diversion of Internet users to competitors of Complainant does not give rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraph 4(c)(i) of the Policy.
This, along with the fact that the Domain Name was at the time of filing the Complaint registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per the Complaint, Complainant’s PETPLAN trademark is well known for pet insurance. Furthermore, PETPLAN is a fictitious word. Because the PETPLAN mark had been widely used and registered at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation globally when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of PETPLAN mark on the Internet, namely at the websites “www.petplan.com” and “www.petplan.co.uk” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Respondent could have searched the United States trademark registry and would have found Complainant’s prior registration in respect of PETPLAN (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional terms “claim-form” that correspond to the nature of Complainant’s insurance services. Use of the words “claim-form” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. It also indicates knowledge of Complainant and its field of business.
As Complainant demonstrated, the website content related to the Domain Name is targeting Complainant’s trademark, as it repeatedly references Complainant’s PETPLAN trademark and claiming to offer visitors the ability to “(f)ind an appropriate Pet Plan Claim Form”. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use, the fact that the Domain Name was used for the creation of a website, containing the trademarks of Complainant and claiming to offer to visitors of the website the ability to “(f)ind an appropriate Pet Plan Claim Form” and also sending them, as per Complainant, through various links to the commercial website “www.pdffiller.com” are clear indications that the Domain Name is being used in bad faith (Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488; Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530; Revlon Consumer Products Corporation v. Terry Baumer, WIPO Case No. D2011-1051; WIPO Overview 3.0, section 3.2.1).
Furthermore, as Complainant demonstrated, the Domain Name is used for hosting a website that also contains links to Complainant’s competitors. Registration of a disputed domain name for directing Internet users, including customers and potential customers of Complainant to the website of a competitor of Complainant, constitutes bad faith registration and use (item Industrietechnik GmbH v. Kevin Caulfield, WIPO Case No. D2015-0725; Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).
Lastly, as Complainant has demonstrated, at the time of filing of the Complaint, the Domain Name was registered with a privacy shield service to hide the holder’s identity, which further supports an inference of bad faith (WIPO Overview 3.0, section 3.6).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
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 <pet-plan-claim-form.com> be transferred to Complainant.
Date: October 26, 2018