WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan LTD v. Brent Hollingsworth
Case No. D2018-2594
1. The Parties
The Complainant is Pet Plan LTD of Guildford, Surrey, United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Brent Hollingsworth of Austin, Texas, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <completepetplans.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 November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 detail. In response to a request for clarification from the Center, the Complainant filed an amended Complaint on November 20, 2018. In response to a request for clarification from the Center, the Complainant filed a second amended Complaint on November 21, 2018.
The Center verified that the Complaint together with the amended Complaint and the second 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on December 19, 2018.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 4, 2019. 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 a British insurance company subsidiary of Allianz Insurance PLC and part of the Allianz Global Group. It provides pet insurance for domestic and exotic pets, as well as insurance for pet care professionals and a pet finding service, both in the UK and internationally through various licenses, including US, Canada, Australia, New Zealand, Brazil, Germany and the Netherlands.
The Complainant has operated in the pet insurance market sector since 1976, trading under the mark “Petplan”, which is also its company name, for over 20 years, since 1997. It uses the mark “Petplan” to identify and promote its services, holding several trademark registrations for this mark, alone or in combination with other terms and/or figurative elements, of which the following are sufficiently representative for the present proceeding:
US Trademark No. 78474288 PETPLAN, figurative, registered on October 24, 2006, in classes 16, 36 and 41;
US Trademark No. 85818224 PETPLAN, figurative, registered on May 6, 2014, in classes 6, 16, 18, 35, 36, 41 and 44;
UK Trademark No. 2052294 PETPLAN, figurative, registered on January 17, 1997, in class 36;
UK Trademark No. 2645992 PETPLAN, figurative, registered on June 14, 2013, in classes 6, 16, 18, 35, 36, 41 and 44;
European Union Trademark No. 328492 PETPLAN, figurative, registered on October 16, 2000, in class 36;
European Union Trademark No. 11470465 PETPLAN, figurative, registered on July 12, 2013, in classes 6, 16, 18, 35, 36, 41 and 44;
The Complainant also owns various domain names comprising its trademark PETPLAN, which are linked to its corporate websites used in connection to its services. Its primary domain names are <petplan.co.uk> registered on August 1, 1996, and <petplan.com> registered on March 11, 1996.
The Respondent appears to be an US individual.
The disputed domain name was registered on June 26, 2018 by the Respondent. It resolves to a parking website, which offers its selling and lists various links to third parties’ websites mainly related to health, insurances and medicare, none of them affiliated with or authorized by the Complainant.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
Through its extensive use of the “Petplan” mark for over more than 20 years, as well as large sums invested in promotion, its trademark has acquired reputation and a strong Internet presence. It has won numerous awards including “Your Dog Best Pet Insurance” and “Your Cat Best Pet Insurance” from 2008 to 2016, as well as “Most Trusted Pet Insurance Provider” in 2017 and “Brand of the Year” in 2017 and 2018.
The disputed domain name incorporates its trademark adding the generic descriptive term “complete”, the letter “s” and a generic Top-Level Domain (“gTLD”), being confusingly similar to its trademark. The gTLD is only a standard registration requirement disregarded under the first element confusing similarity test. The term “complete” relates to or describes insurance services, often used in this market sector to describe complete or full coverage insurances. The letter “s” added to the end of its PETPLAN trademarkdoes no avoid the confusing similarity not changing the overall impression created by the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. It has no license or permission to use its trademark not being sponsored by or affiliated with the Complainant, it is not commonly known by the disputed domain name, and no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.
The disputed domain name was registered in bad faith significantly after its trademarks registration in UK and US, when the “Petplan” mark had already become famous. Its trademark is being used since 1997, licensed in numerous countries, and the Complainant is consistently ranked as the number one UK pet insurance provider, being internationally well-known, and having obtained numerous awards (already mentioned). Further, performing an Internet search for the terms “complete pet plans” multiple results refer to “Petplan” mark. Therefore, at the time of registration of the disputed domain name, the Respondent knew or should have known of its existence, and such actual or constructive knowledge of its trademark rights is a factor supporting the Respondent’s bad faith.
The disputed domain name has not been used, it resolves to an inactive site. Passive holding can constitute a factor in finding bad faith registration and use pursuant to the Policy, where other circumstances reveals the absence of good faith. In this case, the disputed domain name incorporates a well-known trademark, intending to cause confusion among Internet users as to its source. Therefore, it is not possible to conceive of any plausible actual or contemplated active legitimate use of the disputed domain name by the Respondent, such use would infringe passing off, consumer protection or trademark rights legislations. Furthermore, the Respondent has ignored the Complainant’s cease-and-desist letters and attempts to resolve this dispute outside of this proceeding.
On the balance of the above facts, it is most likely that the Respondent knew and targeted the PETPLAN trademark.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all the evidence, annexed material and submissions provided by the Parties.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademark PETPLAN. The disputed domain name incorporates this trademark in its entirety adding the term “complete”, a letter “s” and a gTLD. The Complainant’s trademark is recognizable in the disputed domain name, and the gTLD “.com” has no distinctive meaning that may avoid the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has asserted that the Respondent has not been authorized to use its trademark PETPLAN. Furthermore, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain name, has any other rights, or there is any actual or contemplated bona fide or legitimate use of the disputed domain name that could reasonably be claimed. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has neither replied to the Complainant’s cease-and-desist letters nor to the Complaint.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you 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 (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 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 disputed domain name is linked to a parking website, which offers its selling and contains various links to third parties’ websites related to health and medicare, none of them affiliated with or authorized by the Complainant.
The disputed domain name contains the Complainant’s trademark in plural, adding a letter “s” and the term (“complete”), which is a common term in the insurance and health care market sectors, associated with full or complete coverage of insurances or hearth care plans. Both market sectors are covered or related to the Complainant’s business, which consists of providing pet insurances as well as pet health care professional insurances. Therefore, the Panel considers that these minor changes do not avoid a likelihood of confusion or at least a high risk of implied affiliation. The Panel also notes the extensive presence of the trademark PETPLAN over the Internet and its extensive use, among many other jurisdictions, including the US, where the Respondent is located.
It is remarkable that the Respondent has deliberately chosen not to give any explanation or evidence of any rights or legitimate interests in the disputed domain name, having neither replied to the Complainant’scease-and-desist letters, nor to the Complaint. Further, no information about the owner of the disputed domain name or any reference to the absence of affiliation with the Complainant and its trademark is provided in the parking website to which the disputed domain name is linked.
All these circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration by the Respondent, this Panel considers unlikely that the Respondent did not know about the PETPLAN trademark and did not have it in mind. Several factors in this case lead to this conclusion, namely (i) the extensive use of the PETPLAN trademark in US (where the Respondent is located), for over more than 20 years providing insurance services for pets and pet care professionals, as well as a pet finding service, (ii) the extensive presence of the “Petplan” mark over the Internet, (iii) the PETPLAN trademark’s notoriety within the insurance and pet health care market sectors, among pet owners and pet health care professionals, and (iv) its identical reproduction in the disputed domain name, in plural, adding a letter “s” and the term “complete”, commonly used in the insurance and health care businesses.
This conclusion is corroborated by the disputed domain name’s current use, resolving to a parking website, which lists various third-parties’ websites links mainly related to health care and Medicare, and therefore related to the Complainant’s market sector.
The Panel considers that with respect to “automatically” pay-per-click links, a respondent cannot deny responsibility for the content that appears on the website associated with the domain name. The fact that such links are generated by a third party, such as a registrar, or that the respondent has not directly benefited from these links, is not sufficient to prevent a declaration of bad faith. See section 3.5 of the WIPO Overview 3.0.
Other cumulative circumstances of this case may indicate the Respondent is acting in bad faith, in particular (i) its absence of response, not providing any evidence of actual or contemplated good faith use, and (ii) the offer in its parking website for selling of the disputed domain name.
The Policy’s non-exhaustive list of circumstances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel notes that the nature of the disputed domain name (incorporating the Complainant’s trademark in plural differing only in one letter and the addiction of a common word in the Complainant’s market sector) can easily cause confusion.
All these circumstances lead the Panel to conclude that on the balance of the above facts, it is most likely that the Respondent knew and targeted PETPLAN trademark, registering the disputed domain name with the intention of creating a likelihood of confusion as to the affiliation or association with this trademark with the intention of misleadingly attracting Internet users and disrupting the Complainant’s business.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith and the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <completepetplans.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: January 16, 2019