WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Contact Privacy Inc. Customer 1243975004 / Contact Privacy Inc. Customer 1243980331 / Paul Richmond, 808Paul LLC
Case No. D2019-0949
1. The Parties
The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1243975004, Canada / Contact Privacy Inc. Customer 1243980331, Canada / Paul Richmond, 808Paul LLC, United States of America (“USA”).
2. The Domain Names and Registrars
The disputed domain names <onlinepetplan.com> and <onlinepetplans.com> (the “Domain Names”) are registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 29, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 28, 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 was founded in 1976 and is based in Brentford, United Kingdom. It provides pet insurance for domestic and exotic pets (dogs, cats, rabbits, horses, reptiles, birds, and small mammals) in the United Kingdom and, through licensees, in the USA, Canada, Australia, New Zealand, Brazil, Germany, France, Spain, and the Netherlands. In addition, the Complainant offers insurance to pet care professionals and a pet finding service.
The Complainant is the owner of, inter alia, the following trade marks (the “Trade Marks”):
- figurative mark PET PLAN, United Kingdom registration No. UK00002052294, dated January 17,1997
- word mark PET PLAN, registered in Canada under No. 0637434, dated September 27, 1996
- figurative mark PET PLAN, European Union registration No. 001511054, dated December 18, 2001
- figurative mark PET PLAN, registered in the United States under No. 78474288, dated October 24, 2006.
The figurative marks consist of a stylized version of the words PET PLAN, in specific type script.
The Domain Names have both been registered on February 21, 2018 and at some stage resolved to, in the case of <onlinepetplan.com>, a website containing the text “Online Pet Plan” and underneath “Get your Pet Insurance Now” on a colored background and, in the case of <onlinepetplans.com>, the text “Future Home of Something Cool” on a white background.
The Complainant has sent cease-and-desist letters dated March 6, March 20 and April 1, 2019 to which the Respondent has not replied.
5. Parties’ Contentions
The Complainant submits that by virtue of its trade mark and service mark registrations, the Complainant is the owner of the Trade Marks.
According to the Complainant, since the Domain Names consist merely of the Trade Marks and the generic word “online” the Domain Names are confusingly similar to the Trade Marks. The Complainant points out that, since it provides its customers with its services online through its primary domain names <petplan.co.uk> and <petplan.com>, the Domain Names closely relate to and describe the Complainant’s business. Furthermore, the Complainant states, the addition of the letter “s” to the Trade Marks within the domain name <onlinepetplans.com>, does not negate a finding of confusing similarity.
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the Complainant given the Respondent permission to use the Trade Marks in any manner, including in Domain Names. Furthermore the submits that it has not licensed, authorized, or permitted the Respondent to register the Domain Names incorporating the Trade Marks. The Complainant points out that the name in which the Respondent has registered the Domain Names does not resemble the Domain Names and concludes that the Respondent is not otherwise commonly known by the Domain Names. According to the Complainant, the Respondent is using the Domain Names to redirect internet users to websites that lack proper content which shows, the Complainant contends, that the Respondent has not demonstrated any attempt to make legitimate use of the Domain Names and that, therefore, the Respondent has not by virtue of the content of the respective websites, nor by its use of the Domain Names established that these are used in connection with a bona fide offering of goods or services.
The Complainant points out that the Respondent registered the Domain Names well after the Complainant’s registration of the Trade Marks. In the view of the Complainant this demonstrates that the Respondent registered the Domain Names in bad faith, since at the time of registration of the Domain Names, the Respondent knew, or at least should have known, of the existence of the Trade Marks.
According to the Complainant, the Domain Names can only be taken as intending to cause confusion among internet users as to the source of the Domain Names, and thus, must be considered as having been registered and used in bad faith as they (i) both incorporate the Trade Marks in their entirety while there is no plausible good-faith reason or logic for the Respondent to have registered the Domain Names. In addition, the Complainant states that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which serves as further evidence of bad faith registration and use. Furthermore, the Complainant points out, the Respondent has not replied to three cease-and-desist letters which were sent in an attempt to resolve the dispute outside of the UDRP proceedings. On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Names are confusingly similar to the Trade Marks as they incorporate PETPLAN, of which the Trade Marks consist, in its entirety. The addition of the descriptive word “online” and, in case of the domain name <onlinepetplans.com>, a plural “s”, does not avoid a finding of confusing similarity between the Domain Names and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Names. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Names, is not commonly known by the Domain Names and has not acquired trade mark rights in the Domain Names. Based on the evidence submitted by the Complainant, the Respondent has used the Domain Names for a web page with minimal information, while upon verification by the Panel the Domain Names appear not to be connected to any website or other online location. This does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred twenty-two years after the registration of the earliest of the Trade Marks;
- the trade mark PET PLAN has since 2006 been registered in the USA, where the Respondent is located;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Names in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Names have been registered in bad faith.
With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Names:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the use of a privacy shield upon the initial registration of the Domain Names;
- the lack of a response to the three cease-and-desist letters;
- the lack of a formal Response of the Respondent.
Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith.
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 names <onlinepetplan.com> and <onlinepetplans.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: June 11, 2019