WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. AD Burns

Case No. D2019-0755

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is AD Burns, United States of America (“United States”), represented by Smith & Hopen, P.A., United States.

2. The Domain Name and Registrar

The disputed domain name <rxpetplan.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 April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2019, 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 April 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2019. On April 29, 2019, the Respondent requested the automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was May 5, 2019. The Response was filed with the Center on May 3, 2019.

On May 13, 2019, the Complainant submitted a Supplemental Filing. On May 21, 2019, the Respondent also submitted a Supplemental Filing.

The Center appointed Kaya Köklü, Assen Alexiev, and Richard G. Lyon as panelists in this matter on June 12, 2019. The Panel finds that it was properly constituted. Each member of 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 company located in the UK, which provides pet insurance and related services for domestic and exotic pets. It was founded in 1976 and offers its services in various jurisdictions around the world, either directly or by way of licensees.

The Complainant owns various PETPLAN trademark registrations in different jurisdictions, including United States Trademark Registrations No. 78474288 (registered on October 24, 2006) and No. 5218393 (registered on June 6, 2017), both covering protection i.e. for insurance services as protected in class 36.

The Complainant also owns and operates various domain names incorporating the PETPLAN trademark, such as “www.petplan.com” and “www.petplan.co.uk” (for customers in Canada and UK).

The Respondent is an individual resident in the United States. He registered the disputed domain name on November 3, 2011.

The screenshots, as provided by the Complainant, show that the disputed domain name at least in the years 2012 and 2013 resolved to a website, which was used for services related to drug prescription plans for pets, allowing users to receive a discount on prescription drug prices at certain pharmacies (cf. Annex 3 to the Complaint). As can be seen on the provided screenshots, the Respondent used the terms “pet” and “plan” together with the prefix “rx” by writing them separately, not in one word as the Complainant’s PETPLAN trademark.

Prior to initiation of the administrative proceedings, the Complainant sent a cease and desist letter to the Respondent and asking for a transfer of the disputed domain name at no costs (cf. Annex 7 to the Complaint). However, it remains unclear whether the Respondent has ever received and obtained knowledge about this approach. In any event no reply was ever sent.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its PETPLAN trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent “must have been aware” of the Complainant’s PETPLAN trademark when he registered the disputed domain name. In addition, it is inter alia argued that the Respondent has used the disputed domain name to offer services competitive with those provided by the Complainant.

B. Respondent

The Respondent requests the denial of the Complaint and a finding of Reverse Domain Name Hijacking (“RDNH”).

The Respondent alleges to have used the disputed domain name in connection with a bona fide offering of services prior to the notice of this dispute. Furthermore, the Respondent argues that it made “fair use” of the disputed domain name without any intent to commercially gain from misleading or diverting consumers or to tarnish the Complainant’s trademark. The Respondent further alleges that it was unaware of the Complainant or its PETPLAN trademarks until notice of these administrative proceedings. In this regard, the Respondent argues that the Complainant has not provided any evidence of use of its PETPLAN trademarks in the United States prior to the registration of the disputed domain name.

6. Discussion and Findings

6.1. Supplemental Filings

The Panel declines to admit the Parties’ Supplemental Filings.

There is no provision in the Rules allowing such supplemental filings. Rather, the Panel has discretion to admit them, but in this case declines to do so. The Panel notes that the supplemental filings submitted by the Parties mainly repeat arguments already contained in the Complaint and the Response. To the limited extent that they introduce additional arguments and material, the Panel is of the opinion that these arguments and material could have been included in the original Complaint and respectively in the Response.

Just for the sake of completeness the Panel notes that the Parties’ supplemental filings mainly contain legal arguments without the provision of new and relevant evidential material, and hence, nothing which would alter the Panel’s analysis below.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

Finally, it is stated that the Panel will, where appropriate, decide consistent with the consensus views captured in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided evidence that it has registered trademark rights in the mark PETPLAN for inter alia various kind of insurance services.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it fully incorporates the trademark PETPLAN. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The addition of the prefix “rx”, which is commonly accepted to be a shorthand reference to a pharmaceutical prescription, does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s PETPLAN trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As with all three operative Policy elements, the Complainant bears the burden of proof to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel recognizes that this burden of proof would often result in the difficult task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. WIPO Overview 3.0, section 2.1; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Ultimately it remains the Complainant’s burden to prove that the Respondent has used the disputed domain name to trade off the Complainant’s PETPLAN trademark rights.

In this regard, the Complainant has provided uncontested prima facie evidence that the Respondent has not been granted with any explicit permission or license to use the Complainant’s trademark PETPLAN in the disputed domain name.

However, the Respondent has provided evidence, to some extent acknowledged in the Complaint, demonstrating a prior use of the disputed domain name that is consistent with its meaning as a descriptive phrase for drug prescription plans for pets.

In light of the above, the Panel takes into consideration section 2.10.1 of the WIPO Overview 3.0. The consensus view included for this section provides as follows:

“In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”

The Complainant’s contention of illegitimate use turns on its allegation that the Respondent had the Complainant or its trademarks in mind when the Respondent made use of the disputed domain name to sell pet prescriptions. As discussed in the following section, the Panel believes that the Complainant has not provided evidence to establish that necessary predicate. Stated differently, the Respondent has denied such knowledge and the Complainant has not provided evidence that its marks were well enough known in the United States when the Respondent’s use occurred.

As noted, it remains the Complainant’s burden to prove that the Respondent had used the disputed domain name to trade off the Complainant’s PETPLAN trademark rights. Consequently, the Panel is of the opinion that the Complainant has not sufficiently demonstrated that the Respondent lacks rights or a legitimate interest in the disputed domain name.

However, a definitive finding by the Panel in this respect can be omitted, as the Complaint is, in view of the Panel, not successful for the following reasons in respect of the alleged bad faith registration and use by the Respondent.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent both registered and subsequently used the disputed domain name in bad faith.

The fact that some of the Complainant’s PETPLAN trademark registrations pre-date the date that the disputed domain name was registered in this case, is not per se sufficient to accept bad faith registration and use. The Complainant must rather show more than this to succeed under the Policy. As stated in section 3.2.2 of the WIPO Overview 3.0: “where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.”

In this proceeding the Complainant has failed to show that its PETPLAN trademark was already sufficiently in use in the United States or uniquely or specially identified with the Complainant in 2011, when the disputed domain name was registered by the Respondent, so that the Respondent was likely to have become aware of it. Sure, the fact that a respondent is in a different jurisdiction than a complainant is something that in some cases can be considered to be of virtually no significance. But in this case, the Complainant failed to provide any sufficient evidence or material that shows that the Respondent had the Complainant’s PETPLAN trademark in mind when registering the disputed domain name. Particularly, the Complainant did not provide any indication of targeting, imitation, or even reference to the Complainant or its insurance services by the Respondent.

Quite the opposite, the Complainant itself has brought forward material that shows that at least in the years 2012 and 2013 the disputed domain name resolved to a website, which was used for services related to drug prescription plans for pets, allowing users to receive a discount on prescription drug prices at certain pharmacies without any reference to the Complainant and its insurance business (cf. Annex 3 to the Complaint).

In light of the above, the Complainant has not proven its contention that the Respondent was or should have been aware of the Complainant’s trademark and business at the time that it registered the disputed domain name in 2011 and thus that the disputed domain name was registered with the intention of targeting the trademark rights of the Complainant.

The fact that the disputed domain name is now essentially inactive and actually resolves to a passive landing website does not change the Panel’s finding in regard to the state of the Respondent’s knowledge at the time of registration.

Consequently, as the burden of proof concerning bad faith registration and use remains with the Complainant, the Panel finds that the Complainant has not satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking (RDNH)

RDNH is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain name holder of a domain name.

As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).

The Respondent believes that the case at hand constitutes an attempt of a RDNH.

The Panel does not share the view of the Respondent and does not see sufficient indication to assess an attempt for RDNH by the Complainant. In view of the Panel, this case rather illustrates the difficulties of trying to prove bad faith, when registration of the disputed domain name lies back eight years. The Complainant may have overrated the renown of its mark in the United States, but not so egregiously as to justify a finding of abuse, and it did not receive any response from the Respondent to its alleged cease and desist letter sent to the email address indicated in the WhoIs records for the disputed domain name.

Consequently, the Panel is of the opinion that the present case does not qualify as an attempt of RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

Kaya Köklü
Presiding Panelist

Assen Alexiev
Panelist

Richard G. Lyon
Panelist
Date: June 24, 2019