The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / ALVARO PANTOJA, Palantir S.A., Costa Rica, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an informal email communication from the Respondent on March 18, 2020. The Complainant filed an amended Complaint on March 20, 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 March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on April 15, 2020, that it would proceed to panel appointment. The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on April 28, 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. In response to the Notification of Panel Appointment sent to the Parties on April 28, 2020, the Respondent informed the Center by return email of April 29, 2020 that he did only recently received the package of documents from the Center. The Respondent requested a new date for filing a Response. The tracking information by DHL in the case file confirmed that the package was delivered on April 23, 2020. The Panel released Procedural Order no. 1 on May 1, 2020, granting an extension until May 11, 2020 to file a Response. The Respondent filed his Response on May 5, 2020. 4. Factual Background The Complainant is the owner of a number of trademark registrations for PETPLAN across various jurisdictions, including the European Union, United Kingdom, United States, Canada and Australia, e.g., United States trademark registration no. 3161569, registered on October 24, 2006, all of which were issued prior to the Respondent’s registration of the Domain Name (Complaint, Annex 1), hereinafter referred to in single as the “Trademark”. The Complainant has continually operated under the “Pet Plan” name and has used the PETPLAN mark in connection with its pet insurance products. The Domain Name was registered on January 6, 2019. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant provides insurance for domestic and exotic pets in the United Kingdom and various other countries, including the United States, Canada, Brazil, Germany, France, Spain, the Netherlands, Australia, and New Zealand. The company was founded 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 financial services providers. The Trademark is a distinctive and well-known mark used by the Complainant in connection with pet insurance for over 40 years. The Complainant has won numerous awards including the World Branding Awards – Brand of the Year 2017-2018 and 2019-2020, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017. In October 2019, both Petplan UK and Petplan North America featured in a market research called Global Pet Insurance Market Growth Analysis, Forecasts to 2025, which studied inter alia, key players of the Global Pet Insurance market. Moreover, Petplan regularly appears on websites comparing the best pet insurance policies. According to Alexa’s rank, the Complainant’s The Complainant’s Trademark is well recognized and respected worldwide, and in the industry. The Complainant has made significant investment to advertise and promote its PETPLAN trademark worldwide in the media and in the Internet over the years. The Domain Name was registered on January 6, 2019. At the time of filling the Complaint, the Domain Name redirected Internet users to a blank page with the word “comming” [sic], and otherwise lacking content. The Complainant submits that it owns registered trademark rights for its PETPLAN mark as set out above. When comparing the Domain Name and the Complainant’s Trademark, the Top-Level Domain (“TLD”) suffix of the Domain Name may properly be disregarded in assessing and determining confusing similarity between the Domain Name and the Complainant’s trademarks. The Respondent has chosen to register the Domain Name, which is identical to the Complainant’s Trademark, with the TLD “.pet”, which is similar to the first part of the Complainant’s PETPLAN trademark. Therefore, the TLD only serves to augment the confusing similarity between the Domain Name with the Complainant’s trademark. The second level portion of the Domain Name consists solely of the Complainant’s PETPLAN trademark, resulting in the Domain Name that is identical to the Complainant’s PETPLAN trademark. The Complainant further submits 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. The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating Complainant’s trademark. The Respondent is using the Domain Name to redirect Internet users to a blank page with the word “comming” [sic], and otherwise lacking content. The Respondent has failed to make use of this Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Domain Name and website, which evinces a lack of rights or legitimate interests in the Domain Name. According to the Complainant, the Respondent’s registration of the Domain Name postdates the Complainant’s registration of the Trademark and the Complainant’s domain names by several years. The Complainant and its Trademark are known internationally. The fact that the Respondent registered the Domain Name significantly after the Complainant and the Trademark became famous and well known demonstrates that the Respondent registered the Domain Names in bad faith. Further, performing searches across a number of Internet search engines for “petplan” returns multiple links referencing the Complainant and its business. The Complainant further submits that the Domain Name currently resolves to an inactive site and is not being used. The word bad faith “use” 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. The Domain Name is confusingly similar to the Complainant’s trademarks, and the Respondent has made no use of the Domain Name, factors which should be duly considered in assessing bad faith registration and use. The Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus, the Domain Name must be considered as having been registered and used in bad faith pursuant to Policy with no good faith use possible. More specifically, where the Domain Name consists solely of the Complainant’s PETPLAN trademark, there is no plausible good faith reason or logic for the Respondent to have registered the Domain Name. Rather it is indicative of an intention to hold the Domain Name for some future active use in a way that would be competitive with or otherwise detrimental to the Complainant. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity. The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. B. Respondent The Respondent is a Costa Rican company that operates in Costa Rica in the software business. According to the Respondent, the objective of the Domain Name is to administer a new project of the company, which has no relation with the type of service that the company of the Complainant sells. The Respondent has no interest or plans to offer insurance services in any country or territory, similar to those offered by the Complainant. The Respondent does not have operations in any of the countries where the Complainant operates and has no interest in establishing itself in the countries where the Complainant operates and where its trademarks are registered. The Respondent also claims that the Complainant has not met the statutory requirements to conduct business in Costa Rica. The Respondent further submits that there are countless domain names that include the possibility of including the words “petplan” and it is clear that the Complainant has not taken any steps to protect the ownership of these domain names. The Respondent requests that the demand against their company for use and assignment of the Domain Name be declared without place since they have the right to use it for their purposes and it is not going to affect at all the company of the Complainant. 6. Discussion and Findings A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy lists the three elements that the Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in its registered Trademark. The Domain Name is in view of the Panel identical to the Complainant’s Trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments. It has long been established under UDRP decisions that the Top-Level Domain (“TLD”), such as “.pet”, cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity under the first element of the Policy, the TLD may be ignored (see Deutsche Telekom AG v. Dexcom Holdings B.V.,WIPO Case No. DTV2006-0001; Société Anonyme des Eaux Minérales d’Evian v. Mr. Omar Haddedou,WIPO Case No. D2005-0432; Uniqa Insurance Group AG v. Heinz Hayderer,WIPO Case No. D2016-0082; section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity (even identicality) between the Trademark and the Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests The Complainant has submitted evidence showing that it has trademark rights for PETPLAN in numerous jurisdictions. At the same time, there is no evidence proving that the Respondent has been commonly known by the Domain Name, or – aside from its self-serving claim that it wishes to use the term for a software business unrelated to the services of the complainant and in territories in which the Complainant does not have operations – that he is anyhow associated with the term “petplan” which could demonstrate its right or legitimate interests (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). Furthermore, there is no evidence submitted of the Respondent’s demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services (see section 2.2 of the WIPO Overview 3.0). The Panel concludes that the Respondent’s selection of the Domain Name cannot be assumed coincidental as the Domain Name is identical to the Complainant’s famous trademark and carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). Therefore, the Respondent’s conduct clearly targets the Complainant and its business and constitutes an intentional act aiming to mislead Internet users. Therefore, it cannot constitute a bona fide offering of goods or services. The Respondent has no rights or legitimate interests in the Domain Name Consequently, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith At the time of the registration of the Domain Name the Panel concludes that the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally. Furthermore, according to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account the high degree of distinctiveness acquired over time and reputation of the Complainant’s trademark, and the failure of the Respondent to provide any evidence of actual or contemplated good faith use, as well as the implausibility of any good faith use to which the Domain Name may be put. Considering the above, the Panel finds the Domain Name is registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 Domain Name Richard C.K. van Oerle
Sole Panelist
Date: May 25, 2020
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