Complainant is Pet Plan Ltd of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland (United Kingdom “), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Cameron David Jackson of Kingston, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2016, 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 Respondent of the Complaint, and the proceedings commenced on October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2016.
The Center appointed Gary J. Nelson as the sole panelist in this matter on November 23, 2016. 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 the owner of at least two Australian and two United States of America Registrations for trademarks containing the term PETPLAN. Complainant uses its PETPLAN trademark in connection with the offering of pet insurance for domestic and exotic pets. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
Australia
918123
PETPLAN
016, 035, 036 and 041
June 28, 2002
Australia
1534617
PETPLAN
006, 016, 018, 035, 036, 041, 044
January 8,2013
United States of America
3161569
PETPLAN
016, 036 and 041
October 24, 2006
United States of America
4524285
006, 016, 018, 035, 036, 041 and 044
May 6, 2014
The disputed domain name, , appears to have been registered on February 19, 2016. The disputed domain name is not directly linked to a functioning website. It redirects to a holding page. According to annex 9 of the Complaint, the respondent offered to sell the disputed domain name to the Complainant for EUR 300. 5. Parties’ Contentions A. Complainant
Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. Those geographic territories include the United States of America, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands.
Complaint offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals.
Complainant offers insurance to pet care professionals and a pet finding service. Complainant is a subsidiary of Allianz Insurance plc - one of the largest general insurers in the United Kingdom and is part of the Allianz Global Group, one of the world's foremost financial services providers.
Complainant secured valid trademark rights in PETPLAN prior to the registration of the disputed domain name by Respondent.
The disputed domain name is identical or confusingly similar to Complainant’s PETPLAN trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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 the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the PETPLAN trademark and the disputed domain name is identical or confusingly similar to Complainant’s PETPLAN trademarks.
Complainant owns at least two Australian and one United States of America trademark registrations for the PETPLAN word mark. Complainant also owns at least one United States trademark registration for a logo containing the term “petplan” combined with a design element. Specifically, Complainant owns Australian Trademark Registration Nos. 918123 and 1534617, as well as United States of America Trademark Registration Nos. 3161569 and 4524285.
Accordingly, Complainant has established rights in its PETPLAN trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is identical to Complainant’s PETPLAN trademark because the disputed domain name consists of the entirety of Complainant’s PETPLAN trademark and merely adds the generic Top-Level Domain (“gTLD”) “.xyz” as a domain suffix.
Neither the deletion of a design element from a trademark that captures the entirety of the dominant word portion of that same trademark, nor the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity.
In this case, the addition of the gTLD “.xyz” domain suffix directly behind Complainant’s PETPLAN trademark is insufficient to avoid a finding that the disputed domain name is identical or confusing similarity to Complainant’s PETPLAN trademark.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that a respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms “pet”, “plan”, or any combination of these two words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its PETPLAN trademark.
The Panel finds that Respondent is maintaining an undeveloped website associated with the disputed domain name. In this case, Respondent’s failure to develop a website associated with the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(ii)-(iii). See America. Online, Inc. v. Xiangfeng Fu,WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). There is also no evidence that Respondent is using the disputed domain name pursuant to Policy, paragraph 4(c)(iii).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the PETPLAN trademark.
Respondent’s awareness of the PETPLAN trademark can be inferred because Complainant’s PETPLAN trademark is well-known in numerous countries, including in Australia, the United Kingdom, and the United States of America. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Also, the Panel holds that Respondent is merely housing the disputed domain name and has not associated the disputed domain name with an active website. The lack of so-called active use does not prevent a finding of bad faith in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel also finds that Respondent’s offer to sell the disputed domain name to Complainant for EUR 300 is further evidence of bad faith.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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, be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: December 2, 2016
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