WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Richard Werner, ACAA/ESMR
Case No. D2018-2810
1. The Parties
Complainant is Pet Plan Ltd of Guildford, the United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Richard Werner, ACAA/ESMR of Key West, Florida, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name is <communitypetplan.com> which is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2018. On December 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on December 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2019. On January 2, 2019, Respondent sent an email communication to the Center, stating “I do not know what this is and need time to hire an attorney”. The Center received additional email communications from Respondent and Complainant on January 3, 2019. In accordance with paragraph 5(b) of the Rules, the Center extended the due date for Response to January 5, 2019. No response was submitted by Respondent and thus the Center informed the Parties about the commencement of the panel appointment process on January 7, 2019. The Center received an email communication from Respondent on January 7, 2019, to which the Center responded by email on January 8, 2019.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on January 9, 2019. This Panel finds that it was properly constituted. This 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
Complainant is engaged in the provision of insurance for domestic and exotic pets and for pet care professionals, and offers a pet finding service.
Complainant has rights over the following marks: nominative trademark PET PLAN for which it holds registration No. TMA463628 in class 16, registered on September 27, 1996, with the Canadian Intellectual Property Office; figurative trademark PETPLAN, registration No. UK00002052294 in class 36, registered on January 17, 1997, with the United Kingdom Intellectual Property Office, and registration No. 000328492 in class 36, registered on October 16, 2000, with the European Union Intellectual Property Office; and figurative trademark PET PLAN for which it holds registration No. 3161569 in classes 16, 36 and 41, registered on October 24, 2006, with the United States Patent and Trademark Office (the “Trademarks”).
Complainant is the registrant of the domain name <petplan.com> which was registered on March 11, 1996. Allianz Insurance Plc is the registrant of <petplan.co.uk> which was created on August 1, 1996.
The disputed domain name was registered on April 6, 2010. By the time the Complaint was filed, the web site associated to the disputed domain name showed, among others, “Related Links” followed below by “In Animal Pet”, “Animal Pet Vet”, “Pet Animals”, “Pet the Puppy” and “Dog Pet Where”, and followed below by “Search Ads”.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant, founded in 1976 and now a subsidiary of Allianz Insurance plc, offers insurance for domestic and exotic pets (dogs, cats, rabbits, horses, reptiles, birds and small mammals), to pet care professionals and a pet finding service. Complainant provides pet insurance in the United Kingdom, and through various licensees in other jurisdictions (the United States, Canada, Australia, New Zealand, Brazil, Germany and The Netherlands).
PETPLAN is a distinctive and well-known trademark used by Complainant in connection with pet insurance for over 20 years. Complainant is the owner of trademark registrations across various jurisdictions, including every location where insurance policies are sold, which demonstrates that Complainant has spent a considerable amount of time and money protecting its intellectual property rights.
Complainant has won numerous awards, including the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance from 2008 to 2016, World Branding Awards - Brand of the Year 2017 - 2018, and the Consumer MoneyWise Awards - Most Trusted Pet Insurance Provider in 2017.
Complainant has a strong Internet presence through its web sites. According to Complainant’s DNS provider, “www.petplan.co.uk” receives almost 400,000 hits each month and “www.petplan.com” receives 21,000 hits per month.
The disputed domain name entirely reflects Complainant’s PETPLAN trademark, along with the term “community” to the front of the trademark. The mere addition of said term does not negate the confusing similarity between the disputed domain name and Complainant’s trademark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names, and Respondent is not sponsored by or affiliated with Complainant in any way.
Respondent is not commonly known by the disputed domain name. The WhoIs information identifies the disputed domain name’s registrant as “REDACTED FOR PRIVACY”. However, based on WhoIs historical record before the information was redacted for privacy, the registrant appeared as “Richard Werner, ACAA/ESMR”, which does not resemble the disputed domain name in any manner.
Respondent is using the disputed domain name to redirect Internet users to a web site featuring links to third party web sites. Presumably, Respondent receives pay-per-click fees from the web sites that are linked through the disputed domain name’s web site. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name, and thus Respondent is not using the disputed domain name to provide a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent should be found to have registered and used the disputed domain name in bad faith.
Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using such trademark since 1997. Most likely Respondent knew of and targeted Complainant’s trademark. Respondent registered the disputed domain name significantly after Complainant filed for registration its PETPLAN trademark and significantly after Complainant’s registration of its <petplan.co.uk> and its <petplan.com> domain names.
At the time of registration of the disputed domain name, Respondent knew, or at least should have known, of the existence of Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith. Complainant has been in business for over 40 years, is licensed in numerous countries and is consistently ranked the number one pet insurance provider in the United Kingdom. Searches across a number of Internet search engines for “community petplan” return multiple links referencing Complainant and its business.
Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates Complainant’s PETPLAN trademark in its entirety, which demonstrates that Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and associated web site. By creating said likelihood of confusion, leading to misperceptions as to the source, sponsorship, affiliation or endorsement of the disputed domain name, Respondent has demonstrated an intent to capitalize on the fame and goodwill of Complainant’s trademarks in order to increase traffic to the disputed domain name’s web site for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted at the disputed domain name’s web site. Prior UDRP decisions have found bad faith where a respondent uses a confusingly similar domain name to resolve to a web site featuring links to third party web sites that create revenue for the respondent.
Respondent has registered a total of 4 domain names, all of which infringe upon Complainant’s PETPLAN trademark: (i) <communitypetplan.org> and <communitypetplan.net>, both recovered in Pet Plan Ltd. v. Perfect Privacy, LLC / ACAA/ESMR, ACAA/ESMR, WIPO Case No. D2018-0938; (ii) <communitypetplan.us>, Pet Plan Ltd v. Richard Werner / American Companion Animal Asso, NAF Claim No. 1817769, pending proceeding, 1 and (iii) the disputed domain name. That demonstrates that Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use under the Policy and prior UDRP cases.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions. As set forth above, on January 2, 3, and 7, 2019, the Center received informal email communications from Respondent, which in essence read as follows: January 2, 2019: “I do not know what this is and need time to hire an attorney.” - January 3, 2019: “We have not received any legal notification of this and request the right to dispute this illegal takeover of our domain.” - January 3, 2019: “Please send us copies of certified letters or any other proof of service. There are none. […] We are asking for the ability to defend ourselves since we have not been legally served. And yes you have stolen our other domain without our ability to respond as well.” - January 7, 2019: “Except that we have not received proper legal notification, which makes your action illegal. We will just sue after the fact since we have not seen the complaint nor been given time to respond.”
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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 informal email communications from Respondent, referred to above, cannot be deemed as an official response since they do not comply with the requirements set forth in the Rules, paragraph 5(c). This Panel notes that the Center discharged its obligation of notifying the Complaint to Respondent pursuant to paragraph 2(a) of the Rules (and thus it appears from the record that the Respondent received notice of the dispute despise its claims otherwise), and that the Center further provided Respondent with an extension to file a response as per paragraph 5(b) of the Rules. In its email communication of January 8, 2019, the Center pointed out to Respondent, among others: “If you wish to submit a late Response to the Complaint, the WIPO Center will bring the Response to the Panel’s attention (when appointed), and it will be at the sole discretion of the Panel to consider it”, and further attached a copy of the Complaint. Respondent did not submit any further communication. Based on the present record, this Panel considers that Respondent was granted with a fair opportunity to present its case pursuant to the Rules.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant. 2 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the Trademarks.
Since the addition of a generic Top-Level Domain (“gTLD”) suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Further, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate stylized or device elements of a mark (see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, and Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092).
The disputed domain name identically reflects the nominative portion of the Trademarks, albeit with the prefix “community”. It is clear to this Panel that the addition of such a term in the disputed domain name is not enough to avoid its confusing similarity with the Trademarks.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has not given Respondent permission to use the Trademarks in any manner, that Respondent is not sponsored by or affiliated with Complainant in any way, that Respondent is not commonly known by the disputed domain name, and that the web site associated to the disputed domain name shows links to third-party web sites (see section 4. above) for which Respondent presumably receives pay-per-click fees.
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. 3 In the file, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which incorporates the Trademarks (albeit with other term), this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and used the disputed domain name in bad faith, which Respondent chose not to rebut.
Complainant asserts that Respondent should have known of the Trademarks when registering the disputed domain name, and that Respondent is using the disputed domain name to show pay-per-click links to web sites of third parties.
The use of a domain name for a web site that may generate pay-per-click revenue is not, per se, evidence of bad faith. However, there are several factors in this case that in the aggregate lead for a finding of bad faith in the registration and use of the disputed domain name: (i) Complainant’s registration and use of the Trademarks preceded the creation of the disputed domain name by a number of years (including in the United States, country where Respondent is domiciled as per the WhoIs report); (ii) the Trademarks are integrated by the words “pet” and “plan” which confers to them certain distinctiveness; (iii) Respondent is using the Trademarks at the disputed domain name (albeit with an irrelevant prefix) without Complainant’s authorization; (iv) the content of the web site associated to the disputed domain name which shows pet-related legends (which is Complainant’s field of activities); (v) Respondent’s use of a privacy shield service (see section 3.6 of the WIPO Overview 3.0); (vi) prior decisions against Respondent for other domain names that also reproduce the Trademarks 4 ; and (vii) the absence of a formal response, which is indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name. 5
In sum, the overall evidence in the file leads this Panel to deduce that Respondent’s choice of the disputed domain name was deliberate for its substantial identity with, and with the likely intention to benefit from the reputation and goodwill of, the Trademarks, which denotes bad faith. 6
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <communitypetplan.com> be transferred to Complainant.
Date: January 23, 2019
1 A decision dated December 21, 2018, was issued under such proceeding ordering the transfer of said domain name to Complainant (publicly available at “www.adrforum.com/domaindecisions/1817769.htm”). See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).