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 Contact Privacy Inc. Customer 1242982328 of Toronto, Canada / Russell Dayvault of Tarpon Springs, Florida, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 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 November 8, 2018. On November 8 and 12, 2018, the Center received two informal email communications from the Respondent.
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 November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties on December 5, 2018, that it would proceed to panel appointment.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on December 14, 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 Pet Plan Ltd provides pet insurance for domestic and exotic pets both in the United Kingdom and through various licensees in Australia, Brazil, Canada, Germany, the Netherlands, New Zealand and the United States. It 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 formed in 1976 and is based in Brentford, United Kingdom. It is now a subsidiary of Allianz Insurance Plc, one of the largest general insurers in the United Kingdom and part of the Allianz Global Group, one of the world’s foremost providers of financial services.
The Complainant is the proprietor of the trademarks PETPLAN and PET PLAN registered in various jurisdictions, including territories where its policies are sold. By way of example, annexed to the Complaint are particulars of such registrations in the United Kingdom, the European Union, Canada and the United States.
Mark
Jurisdiction
Registration
Number
Filing Date
Classes
PETPLAN
CA/CIPO
TMA463628
July 31, 1989
36
PETPLAN
CA/CIPO
TMA592526
August 11, 2000
16,25,26,35,36,38,40,41,42,44
PETPLAN
US/USPTO
3161569
August 26, 2004
36
PETPLAN
UK/UKIPO
UK00002052294
January 19, 1996
16,36,41
PETPLAN
UK/UKIPO
UK00002222270
February 14, 2000
6,16,25,35,36,41,42,45
PETPLAN
EU/EUIPO
000328492
July 11, 1996
36
PETPLAN
EU/EUIPO
001511054
February 16, 2000
16,25,26,35,36,41,42
The Complaint exhibits particulars of created on August 1,1996, by Allianz Insurance Plc, the Complainant’s parent company and created by the Complainant on March 11, 1996. The Complaint states that the website to which the domain name resolves receives almost 400,000 hits per month and the website to which the domain name resolves an additional 21,000 hits per month.
The Complainant states that its PETPLAN products have won numerous awards over the years, including the “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 Complaint asserts that PETPLAN is a distinctive and well-known mark which has been used by the Complainant for over 20 years.
The disputed domain name was registered on July 22, 2018. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name can be considered as capturing, in its entirety the Complainant’s PETPLAN trademark and simply adding the generic terms “get a” to the front of the trademark. The mere addition of these generic terms to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy, paragraph 4(a)(i), and the disputed domain name must be considered confusingly similar to the Complainant’s trademark. It is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to the Policy. In that connection, the Complainant also cites UDRP decision Pfizer Inc v. Intermeds, LTD/ John Velasquez,WIPO Case No. D2005-0153 (finding the domain name differed from the VIAGRA trademark only in the descriptive term “shop” and that “none of these integers [additional words] alone would preclude the disputed domain name from being confusingly similar”). The Complainant also relies on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 which provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.
The Complainant suggests that the Respondent is not commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(c)(ii).
The Complainant adds that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. The Respondent has 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 evinces a lack of rights or legitimate interests in the disputed domain name, as confirmed by numerous past UDRP panels. The Complainant cites the UDRP decision Washington Mutual, Inc. v. Ashley Khong,WIPO Case No. D2005-0740 (““Parking” a domain name which then points to its registrar’s Web site services does not constitute a bona fide offer of goods or services as required by the Policy paragraph 4(c)(i).”)
Lastly, the Complainant states that the disputed domain name was registered and is being used in bad faith for the following reasons:
- The Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 1997, which is before the Respondent’s registration of the disputed domain name on July 22, 2018.
- At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.
- The disputed domain name currently resolves to a blank page and is not being used, though past UDRP panels have noted that the word bad faith "use" in the context of the Policy, paragraph 4(a)(iii), does not require a positive act on the part of the Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to the Policy, paragraph 4(a)(iii).
- The disputed domain name incorporates the Complainant’s PETPLAN trademark in its entirety, there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name, rather it is indicative of an intention to hold the disputed domain name “for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant.
- Any use of the disputed domain name whatsoever, whether actual or theoretical, would have to be in bad faith: “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
- The Complainant has sent several cease and desist letters to the Respondent via the privacy service’s online contact form but has not received any response.
-The Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not submit a formal response to the Complaint. There are only two email communications by the Respondent and say that:
On November 8, 2018
“Hello. You have my old address on file. How do I update that with you?
-Russell
Sent from mobile device. Please excuse abbreviations and typos.”
And on November 12, 2018
“2777 Meadowview Ct, Tarpon Springs, FL 34688
Thank you.” 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy sets out circumstances which, again 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.
As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trademark PETPLAN with the terms “get” and “a”. See section 1.8 of the WIPO Overview 3.0”. The addition of these terms does not avoid the confusing similarity.
The generic Top-Level Domain (“gTLD”) extensions “.com”, “.net”, and “.org” are generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the trademark PETPLAN in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain name or otherwise.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the disputed domain name it knew that PETPLAN was the trademark of the Complainant, and accordingly finds that the Respondent registered the disputed domain name in bad faith.
The lack of use of the disputed domain name constitutes use in bad faith and the fact that the disputed domain name was/ is inactive does not alter this conclusion, since passive holding of a domain name containing a famous trademark, especially in conjunction with the provision of false WhoIs information, can still constitute bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the disputed domain name or that there is conceivable good faith use for the disputed domain name. After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds in favor of the Complainant on the third element 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 disputed domain name be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Date: December 29, 2018
Full & Egal Universal Law Academy