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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Dale Price

Case No. D2020-1639

1. The Parties

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

The Respondent is Dale Price, United States of America.

2. The Domain Names and Registrars

The disputed domain names <familypetplan.com>, and <familypetplans.com> are registered with GoDaddy.com, LLC and Wild West Domains, LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 24, 2020, the Registrars transmitted by email to the Center their 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 June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2020.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 17, 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

The Complainant is a British company providing pet insurance for pets in the UK and worldwide. The Complainant operates in several countries and can trace its history back to 1976, when it was created in Brentford, UK. The Complainant is currently a parent company of Allianz Insurance plc, part of the Allianz Global Group. Evidence and details on the history of the Complainant can be found in Annex 6.1 of the Complaint.

Over decades the Complainant has built goodwill in the mark PETPLAN, rendering services from individual policies for dogs, cats, rabbit, horse or other exotic pets, to insurance for anyone in the business of pet care. PETPLAN is a distinctive and well-known mark used by the Complainant in connection with pet insurance for over 40 years. Annexes 6.2 and 6.3 of the Complaint provide information on awards received, as well as press articles on the activities of the Complainant.

The Complainant owns several registrations and applications for the PETPLAN trademark, as well as for domain names incorporating this mark, covering a wide range of products and services including the United States stylized trademark registration No. 3161569 filed on August 26, 2004 and registered on October 24, 2006, for goods and services in International Classes 16, 36, and 41; Further, evidence of these registrations were duly produced in the Complaint as Annexes 1, 4, 5 and 7.

The disputed domain names were registered on February 19, 2014, and November 4, 2013, respectively. The disputed domain name <familypetplan.com> resolves to pay-per-click page, and the disputed domain name <familypetplans.com> does not resolve to an active website,

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of registrations worldwide for the mark PETPLAN, which has been in use worldwide for over 45 years.

The Respondent registered the disputed domain names, which incorporates the trademark PETPLAN, registered by the Complainant.

As stated by the documents presented, the registration and use of the trademark PETPLAN predates the registration of the disputed domain name.

The expression chosen by the Respondent to compose the disputed domain names together with “Petplan” is “family”, which does not differentiate the domain names from the Complainant’s trademark, and evokes the activities of the Complainant.

The disputed domain name <familypetplan.com> directs to a page with several links to third parties’ websites, some of which directly compete with the Complainant’s business.

The Complainant alleges that such proceeding is clearly calculated to mislead consumers and tarnish the Complainant’s trademark. Further, the Complainant alleges that there is no coincidence in the adoption of the disputed domain names, being the choice a pretext for commercial advantage.

The other disputed domain name, <familypetplans.com>, does not direct to an active website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:

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

(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.

A. Identical or Confusingly Similar

The disputed domain names are, indeed, confusingly similar to the PETPLAN trademark, as the latter is incorporated in its entirety in the disputed domain names, with the mere addition of the word “family” and of an “s” to the trademark, in one of them.

The Complainant has presented evidence of ownership of the trademark PETPLAN in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.

The use of the Complainant’s trademark with the addition of the word “family” and the addition of an “s” in the disputed domain names does not prevent a finding of confusing similarity with the trademark.

Given the above, the Panel concludes that the disputed domain names are confusingly similar to the registered trademark of the Complainant

B. Rights or Legitimate Interests

There is clear evidence that the trademark PETPLAN is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent. Furthermore, the Respondent does not appear to be commonly known by the disputed domain names.

It has also been shown that the Respondent is not making any direct use of one of the disputed domain names, <familypetplans.com>, noting this disputed domain name does not resolve to an active website. The Respondent is not making a noncommercial or fair use of the disputed domain names, nor a bona fide offering of goods or services.

The Panel further notes that the disputed domain name <familypetplan.com> resolves to a page with several links to third parties’ websites. The Respondent is using the disputed domain names to redirect Internet users to a website featuring links to a third party’s website. The Panel finds that hosting parked pages comprising commercial links and links to the Complainant’s competitors does not represent a bona fide offering.

The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. In the absence of a Response, the Respondent has not rebutted such prima facie case.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections A and B above can evidence the Respondent’s bad faith in the registration and use of the disputed domain names.

The Complainant’s trademark is recognized as being well known in the respective market. In this Panel’s view, the Respondent was aware of the Complainant’s rights in the PETPLAN mark at the time the disputed domain names were registered. These facts indicate that such registrations were made in bad faith.

The disputed domain names were registered to mislead Internet users – hence the addition of the word “family”, as well as of the letter “s” to the Complainant’s trademark. The Respondent intended to give an overall impression that the disputed domain names are associated with the Complainant. Further, the additions may lead the public to consider the disputed domain names to lead to sites related to the Complainant.

Furthermore, the current passive holding of the disputed domain name <familypetplans.com> is also evidence of bad faith from the Respondent. Previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the Panel notes the distinctive and well known nature of the Complaint’s trademark PETPLAN, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put support a finding of bad faith.

Further, the Panel considers that using the disputed domain name <familypetplan.com> for a website that offers links to pages with contents that directly compete with the Complainant’s business also suggests bad faith.

The Panel finds that the Respondent registered and is using the disputed domain names with the intention of improperly obtaining benefits and harming the Complainant’s reputation in the market.

In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

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, <familypetplan.com> and <familypetplans.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: August 22, 2020

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