WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Graham Walsh, Isnup.com
Case No. D2020-0541
1. The Parties
The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Graham Walsh, Isnup.com, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <discountpetplans.com> (the “Domain Name”) 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 March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2020, 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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on April 7, 2020. 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
Founded in 1976, the Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. The Complainant is now a subsidiary of Allianz Insurance plc. It is the owner of a number of trademark registrations across various jurisdictions, including United Kingdom trademark registration number UK00002052294 (for PETPLAN), with a registration date of January 17, 1997 and European Union trademark registration number 001511054 (also for PETPLAN), with a registration date of December 18, 2001.
The Respondent registered the Domain Name on December 29, 2011.
It resolves to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business e.g. “Dog Insurance Plans”, “Animal Health Insurance” and “Pet Insurance Plans”. Not much else is known of the Respondent as it has not participated in these proceedings.
5. Parties’ Contentions
The following is a brief summary of the main contentions of the Complainant.
The Complainant has continually operated under the Pet Plan name and has used the PETPLAN trademark in connection with its pet insurance products. PETPLAN is a distinctive and well-known mark used by the Complainant in connection with pet insurance for over 40 years. The Complainant has made significant investment in advertising and promoting its PETPLAN trademark worldwide in the media and on the Internet. It has won numerous awards including the World Branding Awards – Brand of the Year 2017-2018 and 2019-2020, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017. It has a strong Internet presence through its websites and its various social media platforms.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of the PETPLAN trademark, which prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case.
The Top-Level Domain (TLD) is to be viewed as a standard registration requirement and, as such, is to be disregarded under the confusing similarity test. In creating the Domain Name, the Respondent has added the generic term “discount” before a pluralized form of the Complainant’s PETPLAN trademark.
Where a trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is not sponsored by or affiliated with the Complainant in any way, and the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner.
The Respondent is not commonly known by the Domain Name in any manner.
The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Presumably, the Respondent receives pay-per-click fees from these linked websites. 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. Thus, the Respondent is not using the Domain Name to provide a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. The WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.9 states that “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
The Respondent’s registration of the Domain Name significantly post-dates the Complainant filing for registration of its PETPLAN trademark at the United Kingdom Intellectual Property Office and the European Union Intellectual Property Office (and also the United States Patent and Trademark Office); the Complainant’s first use in commerce of its trademark (in 1976); and also the Complainant’s registration of its <petplan.co.uk> domain name on August 1, 1996 (and its licensee’s registration of the domain name <gopetplan.com> in 2004).
The domain name was registered and is being used in bad faith
The Complainant has been in business for over 40 years. It is licensed in numerous countries and is consistently ranked the number one pet insurance provider in the United Kingdom. As a pioneer in its field, the Complainant has numerous awards to its credit. The Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 1997, which is before the Respondent’s registration of the Domain Name (on December 29, 2011). At the time of registration, the Respondent knew, or at least should have known of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.
The Respondent has created a likelihood of confusion with the Complainant and its trademarks by registering a domain name that simply adds the generic term “discount” to the front of a pluralized form of the Complainant’s PETPLAN trademark. This demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website to which it resolves. By creating this likelihood of confusion between the Complainant’s marks and Domain Name (leading to misperceptions as to the source, sponsorship, affiliation or endorsement of the Domain Name), the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the website to which the Domain Name resolves for the Respondent’s own pecuniary gain (as evidenced by the presence of multiple pay-per-click links to be found on such website).
Neither the fact that such links are generated by a third party, such as a registrar or auction platform, nor the fact that the Respondent itself may not have directly profited would, in itself, prevent a finding of bad faith.
There is no plausible good-faith reason or logic for the Respondent to have registered the Domain Name incorporating the Complainant’s trademark in its entirety, merely adding the generic term “discount” and an “s” before and after. It is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.
The Respondent has ignored the Complainant’s attempts to resolve the dispute outside of this administrative proceeding which itself provides support for a determination of bad faith registration and use.
It is more likely than not that the Respondent knew of and targeted the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its PETPLAN trademark.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the PETPLAN trademark but adds the word “discount” in front of it and an “s” at the end so as to form the plural of PETPLAN.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity. The PETPLAN trademark is clearly recognizable within the Domain Name. The addition of “discount” (a descriptive word commonly used by those selling goods and services to denote a price reduction) and “s” to pluralize the trademark, indeed do not prevent confusing similarity here. See section 1.8 of the WIPO Overview 3.0.
The Panel finds that the Domain Name is confusingly similar to the PETPLAN trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name resolves (featuring links to third-party websites some of which directly compete with the Complainant’s business), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being a pluralized version of the Complainant’s well-known PETPLAN trademark with the addition of a word commonly used by those selling goods and services online and generally, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party (and in some cases, competing) websites. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other on-line location) or of products or services on it.
It seems very likely that the Respondent was aware of the PETPLAN trademark at the time of registration of the Domain Name and has sought to create a misleading impression of association with the Complainant. It must have known that Internet users looking for the website of the Complainant may well end up at any website to which the Domain Name resolves. It can only be assumed that the Respondent derives (or has the opportunity to derive) some commercial benefit from the click through revenue generated by the website to which the Domain Name resolves.
The circumstances of this Complaint mirror the example of circumstances illustrative of bad faith registration and use described above (taken from paragraph 4(b)(iv) of the Policy).
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <discountpetplans.com> be transferred to the Complainant.
Date: April 15, 2020