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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. WhoisGuard Protected, WhoisGuard, Inc. / Bradley Johnson

Case No. D2021-0224

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Bradley Johnson, India.

2. The Domain Name and Registrar

The disputed domain name <petplan.icu> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2021, 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 Complainant on January 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 3, 2021.

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 Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. On February 12, 201, Respondent expressed its willingness to settle the dispute with Complainant. On the same day, the Center informed the Parties that if they wished to explore settlement options, Complainant should submit a request for suspension. Upon receipt of Complainant’s suspension request, the proceeding was suspended on February 15, 2021. Upon receipt of Complainant’s reinstitution request, the proceeding was reinstituted on March 16, 2021, and the new Response due date was March 31, 2021. Respondent did not submit any formal response. Accordingly, on April 21, 2021, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 22, 2021. 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

Complainant is a United Kingdom-based provider of pet insurance services for customers in the United Kingdom and internationally. It is the proprietor of numerous trademark registrations for the PETPLAN mark, including the following:

- United Kingdom Trademark No. UK00002052294 for PETPLAN (device mark), registered on January 17, 1997 for services in class 36;
- United Kingdom Trademark No. UK00002222270 for PETPLAN and PET PLAN (word marks) and PETPLAN (device mark), registered on April 6, 2001 for goods and services in classes 16, 25, 35, 36, 41, 42 and 45;
- European Union Trademark No. 000328492 for PETPLAN (device mark), registered on October 16, 2000 for services in class 36;
- United States of AmericaTrademark No. 3161569 for PETPLAN (device mark), registered on October 24, 2006 for goods and services in classes 16, 36 and 41.

The disputed domain name was registered on July 24, 2020. It does not resolve to an active website. The record includes copies of cease-and-desist letters by Complainant to Respondent dated December 18, 2020 and December 28, 2020. The record also includes a copy of Respondent’s email to Complainant dated December 30, 2020, in which Respondent requested USD 1,000 for the transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it has been in operation since 1976 and offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals, along with insurance for pet care professionals and a pet finding service. Complainant is a subsidiary of Allianz Insurance plc, one of the largest insurers in the United Kingdom and a unit of one of the world’s foremost financial services providers. Complainant has continually operated under the PETPLAN mark and has used the PETPLAN mark in connection with its pet insurance products. PETPLAN is a distinctive and well-known mark. Complainant has a strong Internet presence and is recognized worldwide. Complainant states that the second-level domain of the disputed domain name consists solely of Complainant’s PETPLAN mark, resulting in a domain that is identical to Complainant’s PETPLAN mark.

Under the second element, Complainant states that Respondent is not sponsored by nor affiliated with Complainant in any way. Complainant has not authorized Respondent to register domain names incorporating Complainant’s mark. Respondent is not commonly known by the disputed domain name. The disputed domain name redirects to a blank page. The registration of the disputed domain name significantly postdates Complainant’s registration of its trademarks and of its <petplan.co.uk> domain name.

Under the third element, Complainant states that the PETPLAN mark has become famous and well-known, which demonstrates that the Respondent has registered the disputed domain name in bad faith. Complainant has been in business since 1976 and registered its first trademark in 1997. The disputed domain name is identical to Complainant’s mark and confusingly similar to its domain names, demonstrating Respondent’s familiarity with Complainant’s brand and business. Respondent’s use of this mark implies bad faith because the disputed domain name is obviously connected with a well-known name and products. Complainant has been recognized as the top provider of pet insurance services in North America and the United Kingdom. The disputed domain name is being passively held in bad faith. Complainant caused cease-and desist notices to be served on Respondent. Further, Complainant contacted Respondent in an attempt to settle this dispute, however, Respondent requested fees far above the out-of-pocket costs for the registration of the disputed domain name.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

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

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the PETPLAN mark through registrations in the United Kingdom, European Union, United States of America and elsewhere. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

In comparing Complainant’s PETPLAN mark with the disputed domain name, the Panel finds that the disputed domain name is identical to Complainant’s PETPLAN mark.

It is the well-established view of UDRP panels that a generic Top-Level Domain (“gTLD”) such as “.icu” is viewed as a standard registration requirement and as such is disregarded under the first element. This is true even where the gTLD at issue is a “new gTLD” (see WIPO Overview 3.0, section 1.11.2, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent 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.

The circumstances stated in the Complaint, the Amended Complaint, and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which identically comprises Complainant’s PETPLAN mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the domain name. See, for example, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (<adobeacrobat.com> and <acrobatreader.com>).

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a formal response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s trademark rights predate the registration of the disputed domain name by decades. The PETPLAN mark has acquired a strong reputation through long and continuous use. The disputed domain name is identical to it. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, and, Respondent has concealed its true identity by using a privacy service. Taking into account all of the above, there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Moreover, the record reflects that Respondent sought to sell the disputed domain name to Complainant for a sum exceeding the out-of pocket costs of registration. Under circumstances where the domain name is identical to a long-established mark of which Respondent’s knowledge may fairly be imputed, and where Respondent has not provided any credible rationale for its registration of the disputed domain name containing the mark, the Panel additionally finds bad faith on the part of Respondent on this basis. See WIPO Overview 3.0, section 3.1.1, and cases cited thereunder.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <petplan.icu> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: May 5, 2021

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