Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Data Protected, Canada / Richard Werner, American Companion Animal Asso (ACAA), United States of America (“United States”). 1 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2019, 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 Complainant on July 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 2019.
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 Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 31, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 6, 2019. 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 a company organized under the laws of the United Kingdom, which provides a wide range of pet insurance products for domestic and exotic pets both in the United Kingdom as well as worldwide through various licensees.
Complainant has provided evidence that it is the owner of numerous trademark registrations worldwide relating to its company name and brand “Pet Plan”, including, inter alia, the following:
- Word mark PETPLAN, United States Patent and Trademark Office (USPTO), Registration Number: 3161569, Registration Date: October 24, 2006, status: active;
- Word-/design mark PETPLAN, United Kingdom Intellectual Property Office (UKIPO), Registration Number: 2052294, Registration Date: January 17, 1997, status: active;
- Word-/design mark PETPLAN, European Union Intellectual Property Office (EUIPO), Registration Number: 328492, Registration Date: October 16, 2000, status: active.
Furthermore, Complainant has evidenced to own various domain names relating to its PETPLAN trademark, including , which redirects to Complainant’s official website at “www.” promoting Complainant’s PETPLAN products and services.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States doing business as “American Companion Animal Asso (ACAA)”. Respondent registered the disputed domain name on December 12, 2018, which by the time of the rendering of this decision does not redirect to any valid content on the Internet.
On June 14, 2019, Complainant sent a Cease and Desist letter to Respondent requesting to transfer the disputed domain name upon Complainant which Respondent denied.
In the past, Respondent had registered other domain names relating to Complainant’s PETPLAN trademark, e.g. , , , and , all of which were transferred from Respondent to Complainant by means of UDRP proceedings, e.g. Pet Plan Ltd v. Richard Werner, ACAA/ESMR,WIPO Case No. D2018-2810; Pet Plan Ltd v. Perfect Privacy, LLC / ACAA/ESMR, ACAA/ESMR,WIPO Case No. D2018-0938.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to have started business back in 1976 and to have spent a considerable amount of time and money protecting its PETPLAN trademark for over 20 years, the result being that the latter is meanwhile distinctive and well-known.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s PETPLAN trademark, as the disputed domain name captures this trademark in its entirety simply adding the generic term “community”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is neither sponsored by or affiliated with Complainant, nor has Respondent been given a license, authorization, or permission to use Complainant’s trademark in any manner; (2) neither Respondent nor Respondent’s organization is commonly known by the disputed domain name and Respondent does not own any trademark registrations including the term “petplan”; (3) Respondent is redirecting the disputed domain name to a website that resolves to a DNS error page and lacks content; and, (4) from the tone of correspondence exchanged between the Parties and given the former UDRP proceedings it appears that Respondent registered the disputed domain name purely as an act of vendetta.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) registration of the disputed domain name took place significantly after Complainant registered its trademarks, e.g. in 2006 and 1997, respectively; (2) Respondent is in the same industry as Complainant and is located in the United States, where Complainant has a business presence; (3) Respondent registered the disputed domain name after Complainant filed multiple UDRP proceedings for domain names that were identical to the disputed domain name and only differed in the choice of the Top-Level Domain, clearly demonstrating that Respondent was aware of Complainant’s trademark at the time the disputed domain name was registered; (4) there is no other indication that Respondent could have registered and used the disputed domain name for any non-infringing purpose; and, (5) Respondent is engaging in a pattern of cybersquatting and on the balance of facts it is clear that Respondent knew of and targeted Complainant’s PETPLAN trademark when registering and using the disputed domain name, thus acting in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the PETPLAN trademark in which Complainant has rights.
The disputed domain name incorporates the PETPLAN trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether e.g. descriptive or geographic) to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “community” does not dispel the confusing similarity arising from the incorporation of Complainant’s PETPLAN trademark in the disputed domain name. B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s PETPLAN trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “petplan”. The Panel recognizes that the disputed domain name resolves to a DNS error page and lacks any valid content on the Internet. In this context, UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Noting that the disputed domain name so far is only passively held by Respondent, UDRP panelists have found as a general rule that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s trademark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
The Panel agrees with Complainant’s line of argumentation that the multiplicity of domain names created by Respondent at several occasions in the past, including the disputed domain name, clearly demonstrates Respondent’s knowledge of and familiarity with Complainant’s PETPLAN trademark by the time of the disputed domain name’s registration and, furthermore, that the disputed domain name, which was registered only after multiple UDRP proceedings between the Parties had taken place, is directly targeting Complainant’s PETPLAN trademark. Respondent, by registering at least five domain names confusingly similar to Complainant’s PETPLAN trademark, obviously engaged in a pattern of conduct in order to prevent Complainant as the owner of the PETPLAN trademark from reflecting the same in a corresponding domain name. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false WhoIs contact information since the Notification of Complaint sent to Respondent via DHL on July 19, 2019, could not be delivered. This fact at least throws a light on Respondent’s behavior, which supports the conclusion of a bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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.
Stephanie G. Hartung
Sole Panelist
Date: August 13, 2019
1 It is evident from the case file that Data Protected is a privacy protection service and that Richard Werner, American Companion Animal Asso (ACAA), is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Full & Egal Universal Law Academy