WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. On Behalf of petplansnow.com Owner, On Behalf of petplansdirect.com Owner, Whois Privacy Service / Dean Martin

Case No. D2021-0321

1. The Parties

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

The Respondent is On Behalf of petplansdirect.com Owner, Whois Privacy Service, United States of America (“United States” and “US”) / Dean Martin, United States .

2. The Domain Names and Registrar

The disputed domain names <petplansdirect.com> and <petplansnow.com> are registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2021, 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 February 4, 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 the Respondent of the Complaint, and the proceedings commenced on February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on March 9, 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

The Complainant Pet Plan Ltd, which is a subsidiary of Allianz Insurance plc, provides pet insurance for domestic and exotic pets both in the United Kingdom (“UK”) and Canada, US, Australia, New Zealand, Brazil, Germany, France, Spain, and the Netherlands through licensees.

The Complainant has been founded in 1976 and continually operated under PETPLAN mark in connection with pet insurance services and owns several registrations among others the following ones:

- US Trademark registration No. 3161569 for the trademark PETPLAN registered on October 24, 2006 in classes 16, 36, and 41.

- UK Trade Mark registration No. 2052294 for the trademark PETPLAN registered on January 17, 1997 in class 36.

- European Union Trade Mark (“EUTM”) registration No. 000328492 for the trademark PETPLAN registered on October 16, 2000 in class 36.

The disputed domain names were both registered on September 20, 2020 in the name of the Respondent who appears to be a physical person domiciled in US. The disputed domain names have not been put into use.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark PETPLAN and that the addition of the combination of words “direct” and “now” reinforce the association between the disputed domain names and the Complainant’s trademark.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to register or use any domain name incorporating the trademark PETPLAN.

Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s well-known trademark. The Respondent did not reply to the cease-and-desist letter sent by the Complainant and the disputed domain names has not been put into use and a privacy shield has been used for hiding the identity of the Respondent. All of these circumstances indicate that the disputed domain names have been registered and in used in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested namely the transfer of the disputed domain names:

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

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the PETPLAN trademark.

The disputed domain names <petplansdirect.com> and <petplansnow.com> integrate the Complainant’s PETPLAN trademark in its entirety, as its dominant element.

The disputed domain names differ from the registered PETPLAN trademark by the additional words “direct” and “now” and the generic Top-Level Domain (“gTLD”) “.com”. The additional words “direct” and “now” do not prevent a finding of confusing similarity under the first element.

Several UDRP panels have ruled that the mere addition of an additional term, descriptive or otherwise does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark.

As regards the gTLD, it is typically disregarded under the confusing similarity test.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has based on the facts and arguments set out above made a prima facie showing of a lack of the Respondent’s rights or legitimate interests in the mark. The burden of production has therefore shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests under the second element of the Paragraph 4(a) of the Policy. Considering that the Respondent did not reply to the Complainant’s claims, the Respondent did no effort to demonstrate any rights or legitimate interests in the disputed domain name, and has not rebutted the Complainant’s prima facie case.

Accordingly, the Panel determines the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

At the time of registration of the disputed domain names which occurred in 2020, the Complainant’s trademark PETPLAN was a well-known trademark for a very long time. As the Complainant submits, it is inconceivable beyond any doubt that the Respondent would not have known of the Complainant’s trademark. The Respondent did not oppose such arguments.

The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).

The Respondent has registered the disputed domain names but has not put them to any material use. Thus, the Respondent is holding the disputed domain names passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily prevent a finding of bad faith in line with the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Moreover, the Complainant sent a cease-and-desist letter dated December 11, 2020, to the Respondent. No reply was received. The Panel finds the Respondent’s conduct in failing to reply to the Respondent’s cease-and-desist letter to be further evidence of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Lastly, the Panel observed that the Respondent used a privacy shield and hide his identity. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant, to give impression that the Complainant is offering this website in the absence of any information regarding the ownership of the website and to obstruct proceedings commenced under the Policy.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 <petplansdirect.com> and <petplansnow.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: March 25, 2021