WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Corner Store BV
Case No. DEU2018-0027
1. The Parties
The Complainant is Pet Plan Ltd of United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Corner Store BV of Beesd, The Netherlands.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <pet-plan.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is AXC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 27, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 31, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2018.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 26, 2018. 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 ADR Rules, Paragraph B(5).
The language of this administrative proceeding is English, that being the language of the registration agreement, according to Paragraph A(3)(a) of the ADR Rules.
4. Factual Background
The Complainant, Pet Plan Ltd, provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licenses. The Complainant offers insurance for dogs, cats, rabbits, horses, reptiles, birds and small mammals. In addition, it offers insurance to pet care professionals and a pet finding service. The Complainant was founded in 1976 and is based in United Kingdom. It is now a subsidiary of Allianz Insurance plc – one of the largest general insurers in the UK and part of the Allianz Global Group, one of the world’s foremost financial services providers.
According to the Complainant, PETPLAN is a distinctive and well-known trademark used by the Complainant in connection with pet insurance for over 20 years. The Complaint has won numerous awards including Your Dog Best Pet Insurance and Your Cat Best Pet Insurance winner from 2008-2016, World Branding Awards – Brand of the year 2017-2018, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the words “petplan” in various jurisdictions throughout the world, including the following:
- the European Union Trademark (“EUTM”) for the word PETPLAN with registration number 000328492 registered as of October 16, 2000,
- the EUTM for the word PETPLAN with registration number 001511054 registered as of December 18, 2001,
- the EUTM for the word PETPLAN with figurative element with registration number 011470465 registered as of July 12, 2013,
- the UK Trademark for the word PETPLAN with registration number 2052294 registered as of January 17, 1997.
The disputed domain name was registered on February 1, 2018 and at the date of the decision resolves to an inactive website.
5. Parties’ Contentions
The Complainant argues that disputed domain name incorporates the Complainant’s PETPLAN trademark with the addition of a hyphen between the words “pet” and “plan”, thus the disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark. The Complainant cites previous UDRP decisions to argue that the mere addition of a hyphen does not distinguish the disputed domain name and it is confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent is not commonly known by the disputed domain name and that the Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. The Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page that lacks content and has thus failed to make use of the disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website which evidences a lack of rights or legitimate interests in the disputed domain name.
Further, the Complainant argues that its PETPLAN trademark is known internationally and at the time of the registration of the disputed domain name the Respondent knew or at least should have known of the existence of the Complainant’s trademark. The Complainant contends that the registration of domain names containing well-known trademarks constitutes bad faith per se. The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s trademark only to redirect Internet users to an inactive website. The Complainant also mentions that the Respondent has registered another domain name that infringes upon the Complainant’s PETPLAN trademark, respectively <pet-plan.be> and that such registration demonstrates that the Respondent has engaged in a pattern of cybersquatting which is evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for the Complainant to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has submitted evidence of its rights for the PETPLAN name in the form of registered trademarks right in the European Union and in various other jurisdictions. For the purposes of the present proceedings the Panel holds that the trademark registrations submitted by the Complainant satisfy the requirement of having a right recognized by the Community law.
The disputed domain name incorporates the Complainant’s trademark PETPLAN in its entirety and differs from the said trademark only by the insertion of a hyphen between the words “pet” and “plan”. The mere addition of such a punctuation mark does not dispel the confusing similarity. See for a similar finding Pet Plan Ltd. v. Chen Qingling / Domain Administrator See PrivacyGuardian.org, WIPO Case No. D2015-0385.
The country code Top-Level Domain (“ccTLD”) “.eu” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. DEU2018-0012.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark PETPLAN as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The consensus view of UDRP panels1 on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark PETPLAN and claims that the Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “petplan”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary. However, the Panel will briefly address this third element.
Section 3.3 of the WIPO Overview 3.0 explains that non-use of a domain name, including a blank or “coming soon” page does not prevent a finding of bad faith under the doctrine of passive holding. Among the factors typically considered by panels to be relevant are “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. See Carrefour v. Manager Limited Domain / Maria Di Blasi, WIPO Case No. DEU2018-0014.
The Panel finds that passive holding of the disputed domain name does not in the circumstances of this case prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name. The Complainant’s trademark PETPLAN has been extensively used by the Complainant and its licensees in various countries in relation to pet insurance and acquired reputation (see Pet Plan Ltd. v. Registration Private, Domains By Proxy, LLC / Nicholas Maddalena, WIPO Case No. D2017-0839). The Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s well-known trademark (see Pet Plan Ltd v. Contact Privacy Inc. Customer 1241410113 / Paul Richmond, 808Paul LLC, WIPO Case No. D2017-2259). The Complainants pet insurance and related services have been distinguished with several awards and enjoy considerable reputation (see Pet Plan Ltd v. Jesse Patterson, WIPO Case No. D2018-0820). Moreover, the Respondent has not participated in these proceedings and has failed to rebut the Complainant’s contentions. Based on the evidence and circumstances of this case, the Panel finds that the Respondent’s passive holding of the disputed domain name amounts to registration or use in bad faith. See for a similar finding Skorpio Limited and Owenscorp v. Identity masked by EU data protection / Jenniese Daivis, WIPO Case No. DEU2018-0005.
The Panel has also taken into account that the Respondent seems to have engaged in a pattern of registering domain names that include trademarks of others, as he registered the domain name <pet-plan.be>, directed at the trademarks of the Complainant.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <pet-plan.eu> be transferred to the Complainant, which, being located in the United Kingdom , satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002.
Date: November 19, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence.