The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1245150023, Contact Privacy Inc. Customer 1245150023 / Ryand Gottschalk, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2019. On December 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 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 the Complainant on January 6, 2020 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 January 8, 2020. 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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. The Respondent sent emails to the Center on January 22, 2020 and January 26, 2020 regarding the settlement. The Center proceed with the Panel appointment process on February 5, 2020. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on February 12, 2020. 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 provides pet insurance for domestic and exotic pets in various countries, for which it uses the trademark PETPLAN. The Complainant was founded in 1976 in United Kingdom and is now a subsidiary of Allianz Insurance plc. The Complainant is the owner of the trademark PETPLAN, registered inter alia in the European Union under no. 001511054 with priority from February 16, 2000. The disputed domain name was registered on July 29, 2019. The disputed domain name redirects to an inactive page. 5. Parties’ Contentions A. Complainant The disputed domain name includes the Complainant’s trademark in its entirety combined with the descriptive phrase “get me a”. This descriptive addition is not sufficient to remove similarity between the Complainant’s trademark and the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant has not given the Respondent permission, authorization or license to use the Complainant’s trademark in any manner. The Respondent is not commonly known by the disputed domain name and the Respondent is not making any legitimate or fair use of the disputed domain name as it merely resolves to a DNS error page. The Respondent must have been aware of the Complainant’s well-known trademark when registering the disputed domain name because of the Complainant’s numerous trademark registrations and because the Complainant has been in business for over 40 years. The fact that the disputed domain name resolves to an error page and is not in active use can constitute a finding of bad faith registration and use pursuant to the Policy. There is no plausible good faith reason for the Respondent to register a domain name including the Complainant’s trademark and descriptive words “get me a”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The disputed domain name includes the Complainant’s trademark in its entirety, combined with the descriptive words “get me a”. This conveys the impression that the disputed domain name would be used to offer the Complainant’s services to Internet users. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “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 nature of such additional term(s) may however bear on assessment of the second and third elements”. As the disputed domain name includes the Complainant’s trademark in its entirety combined with a descriptive words, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 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 [the respondent’s] 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 trademark 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 or competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.” Because the Respondent has included the Complainant’s trademark in the disputed domain name and has not put it into any legitimate use, the Panel considers that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. According to Section 3.3 of WIPO Overview 3.0, the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. When looking at the totality of the circumstances in this case, the Panel finds that the Complainant’s trademark has been used for over 40 years, the disputed domain name is confusingly similar to the Complainant’s trademark, the Respondent has used a privacy service to conceal its identity and the Respondent has failed to respond to the Complaint or the Complainant’s prior message. The Respondent has also not put the disputed domain name into any legitimate use that could negate these findings. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 Tuukka Airaksinen
Sole Panelist
Date: February 26, 2020
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