WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd. v. Perfect Privacy, LLC / ACAA/ESMR, ACAA/ESMR

Case No. D2018-0938

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 Perfect Privacy, LLC of Jacksonville, Florida, United States of America ("United States") / ACAA/ESMR, ACAA/ESMR of Key West, Florida, United States.

2. The Domain Names and Registrar

The disputed domain names <communitypetplan.net> and <communitypetplan.org> are registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 27, 2018, the Registrar 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 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 4, 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 was founded in 1976. It is part of the Allianz Global Group – one of the world's foremost financial services providers. The Complainant provides pet insurance for domestic and exotic pets in the United Kingdom and around the globe through various licensees in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. The company offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals, as well as insurance to pet care professionals and a pet finding service. The Complainant has continuously operated under the name "Pet Plan" in connection with its pet insurance products.

The Complainant is the owner of the following trademark registrations for PETPLAN (the "PETPLAN trademark"):

- the trademark PETPLAN with registration No. 3161569, registered in the United States on October 24, 2006 for goods and services in International Classes 16, 36, 41;

- the trademark PETPLAN with registration No. 4524285, registered in the United States on May 6, 2014 for goods and services in International Classes 6, 16, 18, 35, 36, 41, 44;

- the trademark PETPLAN with registration No. TMA463628, registered in Canada on September 27, 1996 for services in International Class 36;

- the trademark PETPLAN with registration No TMA592526, registered in Canada on October 17, 2003 for goods and services in International Classes 16, 25, 26, 35, 36, 38, 40, 41, 42, 44;

- the trademark PETPLAN with registration No. 2052294, registered in the United Kingdom on January 17, 1997 for services in International Class 36;

- the trademark PETPLAN with registration No. 2222270, registered in the United Kingdom on April 6, 2001 for goods and services in International Classes 6, 16, 25, 35, 36, 41, 42, 45;

- the trademark PETPLAN with registration No. 2645992, registered in the United Kingdom on June 14, 2013 for goods and services in International Classes 6, 16, 18, 35, 36, 41, 44;

- the trademark PETPLAN with registration No. 328492, registered in the European Union on October 16, 2000 for services in International Class 36;

- the trademark PETPLAN with registration No. 1511054, registered in the European Union on December 18, 2001 for goods and services in International Classes 16, 25, 26, 35, 36, 41, 42; and

- the trademark PETPLAN with registration No. 918123, registered in Australia on May 23, 2005 for goods and services in International Classes 16, 35, 36, 41.

The Complainant has registered and uses the domain names <petplan.co.uk> and <petplan.com>.

The Respondent registered the disputed domain name <communitypetplan.net> on September 24, 2017, and the disputed domain name <communitypetplan.org> on March 31, 2006. At the time of filing of the Complaint, the websites at the disputed domain names offer an undescribed "Community Pet Plan".

5. Parties' Contentions

A. Complainant

The Complainant points out that it has been ranked the number one pet insurance provider in the United Kingdom and has won numerous awards including the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance winner from 2008 to 2016, World Branding Awards – Brand of the Year 2017-2018, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017. The Complainant's website at "www.petplan.co.uk" receives almost 400,000 hits each month and its website at "www.petplan.com" receives 21,000 hits per month.

The Complainant submits that the disputed domain names are confusingly similar to the PETPLAN trademark. They capture the PETPLAN trademark in its entirety with the addition of the dictionary term "community", which addition does not negate the confusing similarity between the disputed domain names and the PETPLAN trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Respondent is not commonly known by them, is not sponsored by or affiliated with the Complainant, and the Complainant has not given the Respondent a permission to use the PETPLAN trademark in any manner, including in domain names. The Complainant submits that the disputed domain name <communitypetplan.net> redirects to the website at the disputed domain name <communitypetplan.org>, which until recently was featuring links to third-party websites, some of which directly competed with the Complainant's business, including multiple third-party links for "Accessories Dog", "Animal Hospital", "Animal Vet", and "Animal Veterinary". According to the Complainant, the Respondent must have received pay-per-click fees from the listed websites. Recently, the disputed domain names started pointing to a website featuring a "community pet plan", which was made either to lend some legitimacy to the disputed domain names or to divert traffic towards the Respondent's own offering by benefiting from the goodwill and fame of the PETPLAN trademark.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. At the time of their registration, the Respondent knew, or at least should have known, of the existence of the Complainant's PETPLAN trademark. The Respondent registered the disputed domain names significantly after the Complainant first registered and started using its PETPLAN trademark in 1997. The Respondent created a likelihood of confusion with the Complainant and the PETPLAN trademark by registering domain names that can be considered as capturing the PETPLAN trademark in its entirety and adding the generic term "community" to it. Thus, the Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for the Complainant's services and to mislead them as to the source of the disputed domain names and their content. By creating this likelihood of confusion between the Complainant's PETPLAN trademark and the disputed domain names, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names, the Respondent intended to capitalize on the fame and goodwill of the Complainant's trademarks in order to increase traffic to the website at the disputed domain names for the Respondent's own pecuniary gain, as evidenced by the presence at the Respondent's website of multiple pay-per-click links until recently, and now by the offering of pet related services on the same website. According to the Complainant, this shows that the Respondent is aware of the Complainant's notoriety and is seeking to benefit from it.

The Complainant states that it sent cease-and-desist letters to the Respondent on November 15, 2017, but no response to these letters was received from the Respondent.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the PETPLAN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the gTLDs ".net" and ".org" of the disputed domain names.

The relevant part of the disputed domain names is therefore the section "communitypetplan", which contains the elements "community" and "petplan". The "petplan" element is identical to the PETPLAN trademark, while the element "community" is a generic term of no distinctiveness. In the Panel's view, the inclusion of this element in the disputed domain name does not eliminate the similarity between the PETPLAN trademark and the disputed domain names.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the PETPLAN trademark in which the Complainant has rights.

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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not affiliated to the Complainant, has not been authorized by the Complainant to register and use domain names incorporating the PETPLAN trademark, and is not commonly known by the disputed domain names. Rather, the Respondent has used the disputed domain names in relation to a website that until recently has displayed pay-per-click links to competitors of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant's allegations in this proceeding. It has not responded to the Complainant's cease and desist letters either.

The Respondent's name, as confirmed by the Registrar, does not reflect or resemble the disputed domain names. The disputed domain names incorporate the PETPLAN trademark entirely with the addition of the non-distinctive term "community". The website linked to the disputed domain names has until recently displayed pay-per-click links to third parties offering services that compete with those of the Complainant. These circumstances make it likely that Internet users may regard the disputed domain names as being affiliated to the Complainant.

In view of this, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain names in an attempt to exploit the popularity of the PETPLAN trademark to attract the attention of Internet users and to mislead them that the disputed domain names and the associated website are affiliated to the Complainant, without disclosing the lack of any relationship with or endorsement by the Complainant. In the Panel's view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

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

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain names fully incorporate the PETPLAN trademark and are confusingly similar to it. The Respondent does not deny that the disputed domain name is linked to a website that has until recently displayed pay-per-click links to third parties offering services that compete with those of the Complainant. The disputed domain names were registered a number of years after the Complainant first registered and started using its PETPLAN trademark in 1997.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain names with knowledge of the Complainant and targeting the PETPLAN trademark in an attempt to attract traffic to the disputed domain names and to the associated website by confusing Internet users that they are reaching an online location affiliated to the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain names.

The Respondent has not denied that the disputed domain name is being used in connection to a website that until recently displayed pay-per-click links to third parties offering services that compete with those of the Complainant without disclosing the lack of relationship between the Parties. Such use may confuse Internet users that they are reaching an online location affiliated to the Complainant. In view of this, the Panel accepts that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names, by creating a likelihood of confusion with the Complainant's PETPLAN trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent's website and of the services offered at the Respondent's website. Therefore, the Panel finds that the disputed domain names have been used in bad faith.

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 <communitypetplan.net> and <communitypetplan.org> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 20, 2018