WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Moniker Privacy Services / VPI Pet Insurance Team, Veterinary Pet Insurance

Case No. D2018-0854

1. The Parties

The Complainant is Pet Plan Ltd of Guildford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States of America (“United States”) / VPI Pet Insurance Team, Veterinary Pet Insurance of Brea, California, United States.

2. The Domain Name and Registrar

The disputed domain name <nwpetplans.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2018 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 May 2, 2018.

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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018.

On May 25, 2018, the Center received a communication from the Respondent informing the Center it had agreed with the Complainant to discuss a potential settlement. The Complainant subsequently filed a suspension request with the Center on the same date. The proceeding was accordingly suspended by the Center to enable the Parties to discuss settlement. On June 28, 2018, the proceeding was reinstituted at the request of the Complainant. The due date for Response was accordingly extended to July 1, 2018. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 5, 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 Rules, paragraph 7.

4. Factual Background

The Complainant is a company, founded in 1976 and, based in the United Kingdom, that provides pet insurance in the United Kingdom and various countries around the globe. It offers its services from its websites at “www.petplan.com” and “www.petplan.co.uk”.

The Complainant holds registered trade marks in various countries, including the United State for the word mark PET PLAN (the “PET PLAN Mark) for goods and services in classes 16, 36 and 41. The PET PLAN Mark has been registered in the United States since October 24, 2006 and is used by the Complainant’s licensee in that territory.

The Domain Name was registered by the Respondent on September 14, 2017. It is presently inactive but prior to the commencement of the proceeding redirected to a website (the “Respondent’s Website”) at “www.petinsurance.com” that offers pet insurance products under the Respondent’s name or the brand name “Nationwide”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s PET PLAN Mark;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the PET PLAN Mark, having registered the PET PLAN Mark in various jurisdictions including the United Kingdom, European Union and the United States. The Domain Name is confusingly similar to the PET PLAN Mark, containing the PET PLAN Mark in its entirety and the generic term “nw”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the PET PLAN Mark. There is no evidence, since the Respondent registered the Domain Name, of the 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 for a legitimate non commercial purpose. The Domain Name resolves to a page selling competing goods and services. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trade marks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under the Policy.

The Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the PET PLAN Mark by virtue of the Complainant’s widespread use and trade mark registrations including registrations in the United States. Such knowledge is an indication of bad faith registration. The Respondent’s use of the Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy because the Domain Name is confusingly similar to the Complainant’s PET PLAN Mark and the Respondent’s Website offers competing goods and services.

B. Respondent

The Respondent did not submit any substantive response to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the PET PLAN Mark, having registrations for the PET PLAN Mark as a trade mark in the United States and selected other countries.

The Domain Name consists of the PET PLAN Mark in its entirety and the descriptive acronym “nw”, the addition of which does not prevent a finding of confusing similarity. The Panel finds the Domain Name is confusingly similar to the Complainant’s PET PLAN Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PET PLAN Mark or a mark similar to the PET PLAN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name, indeed it appears to trade under the names “VPI Pet Insurance”, “Veterinary Pet Insurance” or “Nationwide”.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent was using the Domain Name (which wholly incorporates the Complainant’s PET PLAN Mark), to redirect consumers to its own website at “www.petinsurance.com” where it offers pet insurance products that directly compete with the Complainant’s products (or the products offered by the Complaint’s licensee in the United States). Such conduct is not a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

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

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that, on the balance of probabilities, the Respondent was aware of the Complainant at the time the Domain Name was registered. The Complainant is an entity with a significant trading history and international reputation. It had registered its PET PLAN Mark in the United States, the location of the Respondent and licensed the PET PLAN Mark to its licensee in the United States, a direct competitor of the Respondent. The Respondent appears to offer services in direct competition with the Complainant (or at least its licensee in the United States). As such it would be very unlikely that the Domain Name would have been registered without any awareness of the Complainant or its rights in the PET PLAN Mark. The registration of the Domain Name in awareness of the Complainant and its rights in the PET PLAN Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the PET PLAN Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used the Domain Name, which incorporates the Complainant’s registered PET PLAN Mark, to redirect consumers to the Respondent’s Website at “www.petinsurance.com”, which offers pet insurance in competition with the Complainant. The Panel finds that the use of the Domain Name in this manner amounts to use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <nwpetplans.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: July 11, 2018