The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Web Master / C&F Pet Insurance Group, United States of America, represented by Riker Danzig Scherer Hyland & Perretti LLP, United States of America (“US”). 2. The Domain Names and Registrar
The disputed domain names 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 disputed domain names. On March 11, 2020, 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 the Respondent of the Complaint, and the proceeding commenced on March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Response was filed with the Center on May 14, 2020. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 21, 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. On May 19, 2020, the Complainant submitted a supplemental filing. On May 22, 2020, the Respondent submitted a supplemental filing in reply. 4. Factual Background A. Complainant The Complainant is a company incorporated in the United Kingdom in 1976 and a provider, since 1976, of pet insurance under the trade mark PETPLAN (the “Trade Mark”). The Complainant is the number one pet insurance provider in the United Kingdom. Its licensees also provide pet insurance under the Trade Mark in Canada, the US, Australia, New Zealand, Brazil, Germany, France, Spain, and the Netherlands. The Complainant is the owner of a number of registrations for the Trade Mark in several jurisdictions, including United Kingdom registration No. UK00002052294, with a registration date of January 17, 1997; US registration No. 3161569, with a registration date of October 24, 2006; Canadian registration No. 637434, with a registration date of September 27, 1996; European Union registration No. 328492, with a registration date of October 16, 2000; and Australian registration No. 918123, with a registration date of June 28, 2002. The Complainant is also the owner of the domain name The Complainant’s US licensee is the owner of the domain name The Respondent is a company incorporated in the State of Ohio in the US and a provider, since 2007, of pet insurance under the trade marks HARTVILLE and HARTVILLE PET INSURANCE. The Respondent is part of the United States Fire Insurance Company group, doing business as Crum & Forster Pet Insurance Group. The Respondent has at some point “through a number of organizational changes” apparently come to acquire the assets of the “Hartville Pet Insurance Program”, which have used the brand name “Hartville Pet Insurance” since 2007 for such services. The Respondent is the owner of trade mark registrations in the US for the trade mark HARTVILLE, under registration No. 3,690,689, with a date of first use of December 31, 2007, and a registration date of September 29, 2009; the trade mark HARTVILLE PET INSURANCE, under registration No. 5,891,408, with a date of first use of August 1, 2007 and a registration date of October 22, 2019; and the HARTVILLE PET INSURANCE and shield device trade mark, under registration No. 5,897,292, with a date of first use of December 1, 2017 and a registration date of October 29, 2019 (the “Respondent’s Trade Mark(s)”). In addition to the disputed domain names, the Respondent is the owner of the domain name The disputed domain names The disputed domain names are resolved to the Respondent’s website promoting its pet insurance products and featuring the Respondent’s Trade Marks, at “www.hartvillepetinsurance.com” (the “Respondent’s Website”). 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent contends that the disputed domain names are not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were not registered and are not being used in bad faith. 6. Discussion and Findings 6.1 Supplemental Filings Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response (for example, owing to some exceptional circumstance). Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6). It is not usual practice, absent special circumstances and a satisfactory explanation from the party seeking to file supplementary submissions, for UDRP panels to allow reply or sur-reply submissions. The Panel notes that both Parties repeat old arguments and at the same time introduce new evidence or arguments not explicitly contained in the initial pleadings. In all the circumstances, the Panel therefore determines that it will admit the Parties’ supplemental submissions. 6.2 Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The Respondent contends that, because the disputed domain names comprise the Respondent’s Trade Mark HARTVILLE, and because the Respondent’s Website promotes the Respondent’s pet insurance products under the Respondent’s Trade Marks, the disputed domain names are not confusingly similar to the Trade Mark. The test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognisable within the disputed domain name (see WIPO Overview 3.0, section 1.7). Panels typically do not take into account website content in assessing confusing similarity under the first element of paragraph 4(a) of the Policy, although they may do so if consideration of the broader case context is of assistance in affirming an initial finding of confusing similarity. The disputed domain name Where a relevant trade mark is recognisable within a disputed domain name, the addition of a third party trade mark is insufficient in itself to avoid a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.12). The Panel does not consider it is necessary in this proceeding to, exceptionally, review the content of the Respondent’s Website, although the Panel accepts that the Respondent’s Website contains the Respondent’s Trade Marks. However, the Panel also considers that, if it were necessary to take into account the content of the Respondent’s Website, the fact the Respondent offers on the Respondent’s Website the same pet insurance products as offered by the Complainant under the Trade Mark is also a relevant factor as to confusing similarity, when viewing the broader case context. If anything, the appearance of the Trade Mark in the disputed domain names compared against the Respondent’s Website, which uses the term “pet insurance” (and not the phrase “pet plan”) under the Respondent’s HARTVILLE mark, raises a question for the Respondent to answer as to its knowledge of and intentions towards the Complainant and its Trade Mark. For the foregoing reasons, the Panel finds that the disputed domain names are confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or (iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus shifted to the Respondent to produce evidence to rebut this presumption. The Respondent asserts rights and legitimate interests by virtue of its registration and use of the Respondent’s Trade Marks, including in particular on the Respondent’s Website. The Respondent also points to its use of the tabs “Our Plans” and “PLAN TERM” on the Respondent’s Website. These tabs unsurprisingly describe the pet and animal insurance plans offered by the Respondent and their specific terms on the Respondent’s Website. The Respondent does not, however, make any use the tabs “PET PLAN”, “PET PLANS” or “PETS PLAN” on the Respondent’s Website. The Respondent does not possess any registered trade mark rights in respect of the terms “hartville pet plan”, “hartville pet plans” and “hartville pets plan” comprised in the disputed domain names, nor does the Respondent make any use of these terms in full on the Respondent’s Website. Moreover, in addition to the mark HARTVILLE, the Respondent owns a mark for HARTVILLE PET INSURANCE and not for HARTVILLE “Pet Plan” in any plural or singular variation as reflected in the disputed domain names. In all the circumstances, the Panel is unable to conclude that the Respondent’s registration and use of the Respondent’s Trade Mark which does not include the term “pet plan”, including the use made of the same on the Respondent’s Website, gives rise to rights or legitimate interests in the disputed domain names for the purposes of the Policy. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names: contrary to the cases cited by the Respondent, e.g., Green Roads of Florida, LLC v. Privacydotlink Customer 237978 / IMG, Inc.,WIPO Case No. D2018-2384 the disputed domain names do not merely combine dictionary or descriptive terms, but rather combine the Respondent’s mark HARTVILLE with the plural and singular of “pet plans”. In similar fashion, the Respondent’s reliance on WIPO Overview 3.0 section 2.10.1 is misplaced. Self-evidently, the Respondent’s use of the disputed domain names is commercial, so it cannot be making a legitimate noncommercial or fair use of the disputed domain names. The Panel considers the Respondent’s claim that the use of domain names to redirect does not render such use illegitimate is only partially correct. It would be perfectly acceptable for the Respondent to redirect a domain name comprised solely of dictionary and non trade mark specific terms e.g., “petinsurance.com” to its branded URL, but that is not the case here. In all the circumstances, the Panel finds that the Complainant has met its burden under this element of the Policy. C. Registered and Used in Bad Faith The Respondent denies knowledge of the Complainant and of the Complainant’s Trade Mark at the time it registered the disputed domain names. In this regard, the Respondent notes that the Complainant’s registration for the Trade Mark in the US, although filed on August 26, 2004 and published for opposition purposes on August 8, 2006, has a formal registration date of October 24, 2006 – which is a month after the date of registration of the disputed domain names. The Respondent also points out that it filed its US application for “HARTVILLE” in April 2006, i.e., before the Complainant’s mark was published for opposition. This overlooks however the fact that the Complainant’s Trade Mark application was submitted over a year-and-a-half earlier, and the Panel finds it somewhat difficult to accept that the Respondent would not have come across this application of the Complainant in its own application due diligence. The Panel notes also that the Complainant’s US licensee has owned and used the domain name The Complainant has been using the Trade Mark for over 40 years in respect of pet insurance, is the number one pet insurance provider in the United Kingdom, and has received numerous awards in respect of its pet insurance services provided under the Trade Mark (although, to be fair to the Respondent, while there may be earlier awards in the Complainant’s favour, at least insofar as the evidence on record goes, the awards referred to by the Complainant in the Complaint are themselves from after the date of registration of the disputed domain names). In addition to the United Kingdom, the Complainant and its licensees had already been providing its pet insurance services under the Trade Mark in Canada, Europe, and Australia for several years prior to the date of registration of the disputed domain names. The Panel also considers the following factors are relevant: (1) the Respondent does not possess any registered trade mark rights in respect of the disputed domain names; (2) the disputed domain names are automatically resolved to the Respondent’s Website hosted at its primary domain name In all the circumstances, and notwithstanding the Respondent’s claimed denial (which does not speak to its constructive knowledge), the Panel considers that in light of the repute of the Complainant’s Trade Mark, it is inconceivable that the Respondent was not aware of the Complainant and of its rights in the Trade Mark at the time the Respondent registered and commenced use of the disputed domain names in respect of competing pet insurance services. The Panel finds that, for the purposes of the Policy, the Respondent, in registering and using the disputed domain names, has targeted the Complainant and its Trade Mark. The Panel would also observe that its findings against the Respondent in this proceeding under the Policy will have no bearing on the Respondent’s right to continue using its primary domain name The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 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 names Sebastian M.W. Hughes
Sole Panelist
Dated: June 4, 2020
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