WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Super Privacy Service LTD c/o Dynadot / Zhichao

Case No. D2020-2466

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Zhichao, China.

2. The Domain Name and Registrar

The disputed domain name <petplanbenefit.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2020 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 September 28, 2020.

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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on November 5, 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 provides pet insurance for domestic and exotic pets both in the United Kingdom and in Canada, United States of America, Australia, New Zealand, Brazil, Germany, France, Spain and the Netherlands through various licensees. The company was founded in 1976 and is based in Brentford, United Kingdom. It is now a subsidiary of Allianz Insurance plc, which in turn is part of the Allianz Global Group.

The Complainant has operated under the PET PLAN mark and has used the PETPLAN mark in connection with its pet insurance products for several decades.

The Complainant is the owner of the following trademarks in different jurisdictions:

- PET PLAN United States Registration No. 3161569, registered on October 24, 2006, in respect of services in classes 16, 36, 41;
- PETPLAN & design United States Registration No. 4524285, registered on May 6, 2014, in respect of services in classes 6, 16, 18, 35, 36, 41 and 44;
- PET PLAN Canadian Registration No. TMA463628, registered on September 27, 1996, in respect of services in class 36;
- PET PLAN Canadian Registration No. TMA592526, registered on October 17, 2003, in respect of services in classes 16, 25, 26, 35, 36, 38, 40, 41, 42 and 44;
- PETPLAN United Kingdom Registration No. 2052294, registered on January 17, 1997, in respect of services in class 36;
- PETPLAN United Kingdom Registration No. 2222270, registered on April 6, 2001, in respect of services in classes 6, 16, 25, 35, 36 and 41;
- PETPLAN European Union Registration No. 000328492, registered on October 16, 2000, in respect of services in class 36; and
- PETPLAN European Union Registration No. 001511054, registered on December 18, 2001, in respect of services in classes 16, 25, 26, 35, 36, 41 and 42.

The Complainant operates the domain names <petplan.co.uk> and <gopetplan.com> through which the Complainant promotes its services.

The disputed domain name was registered on March 25, 2020. At the date of filing of the complaint and at the date of the decision, the disputed domain name resolves to a parking page containing pay-per-click advertisement.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its PETPLAN trademarks.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not commonly known by the disputed domain name and the Respondent is not licensed, authorized or permitted to register domain names incorporating the Complainant’s trademarks.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith in view of that the disputed domain name is clearly designed to attract Internet user looking for the mark of the Complaint by using a domain containing a sign identical to the Complainant’s trademarks.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the Complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(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 Panel finds that the disputed domain name is confusingly similar to the Complainant’s PETPLAN mark, in which the Complainant has established rights through registration and use.

The Complainant’s PETPLAN mark is clearly recognizable in the disputed domain name. The inclusion of the term “benefit” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy (see section 1.8 of the WIPO Overview 3.0). Generic Top-Level Domains (“gTLDs”) are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).

Furthermore, the term “benefit” relates to “insurance benefits” and therefore to services for which the Complainant’s trademarks are registered and used. Past panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.

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

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 name (see section 2.1 of the WIPO Overview 3.0).

Based on the evidence provided by the Complainant, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s distinctive PETPLAN mark in mind when registering the disputed domain name. The disputed domain name wholly incorporates the Complainant’s distinctive PETPLAN mark. Furthermore, the disputed domain name contains the term “benefit” which clearly relates to “insurance benefits” and therefore to services for which the Complainant’s trademark is registered and used. The disputed domain name therefore most likely aims to attract Internet users searching for the Complainant’s domain name.

The Complainant therefore made a prima facie case that the Respondent lacks rights or legitimate interests to which the Respondent failed to respond.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The fact that the disputed domain name, which was registered several years after the registration of the Complainant’s trademark, wholly incorporates the Complainant’s PETPLAN mark and contains a term relating to the services provided demonstrates in view of the Panel that the Respondent knew of the Complainant’s PETPLAN trademarks when registering the disputed domain name.

The current use of the disputed domain name as a parked page comprising automatically generated pay-per-click links, which in part also redirect Internet users to websites offering services competing with the Complainant further proves to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark.

The Respondent furthermore has previously been involved in the below-listed recent UDRP cases, among others, which provides evidence of a pattern of cybersquatting in which the Respondent is engaging:

- Guitar Center, Inc. v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1607;

- Milliman, Inc. v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1459;

- Arnold Clark Automobiles Limited v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1406; and

- Tyson Foods, Inc. v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-0883.

Previous UDRP panels have concluded that evidence of prior UDRP decisions in which domain names have been transferred away from respondents to complainants supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting”. (See Arai Helmet Americas, Inc. v. Goldmark, WIPO Case No. D2004-1028, Arai Helmet Americas, Inc. v. Goldmark, WIPO Case No. D2004-1028).

Furthermore, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which further indicates to the Panel that it registered and used the disputed domain name in bad faith (see section 3.6 of the WIPO Overview 3.0).

For these reasons, the Panel considers that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 name <petplanbenefit.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: November 6, 2020