The Complainant is Pet Plan Ltd, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is William (chase) Bruder, United States of America (“US”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2020. On May 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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 proceedings commenced on June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any formal response in this proceeding. Accordingly, the Center notified the Respondent’s default on June 23, 2020.
The Center appointed Leon Trakman as the sole panelist in this matter on June 26, 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 BackgroundThe Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. These include the following PETPLAN trademarks: PETPLAN registered with United States Patent and Trademark Office (“USPTO”) (Registration Number 3161569, registered on October 24, 2006); PETPLAN and Design registered with USPTO (Registration Number 4524285, registered on May 6, 2014); PETPLAN registered with Canadian Intellectual Property Office (“CIPO”) (Registration Number TMA463628, registered on September 27, 1996); PETPLAN registered with CIPO (Registration Number TMA592526, registered on October 17, 2003); PETPLAN registered with United Kingdom Intellectual Property Office (“UKIPO”) (Registration Number 2052294, registered on January 17, 1997); PETPLAN registered with UKIPO (Registration Number 2222270, registered on April 6, 2001); PETPLAN registered in the European Union Trade Mark (“EUTM”) (Registration Number 000328492, registered on October 16, 2000); PETPLAN registered in the EUTM (Registration Number 001511054, registered on December 18, 2001).
The disputed domain name was registered on January 20, 2020, and it currently redirects to “www.chasebruder.wixsite.com” where various pet insurance services are offered.
5. Parties’ Contentions A. ComplainantThe Complainant contends that 1: The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, contrary to Policy, (paragraph 4(a)(i)) and Rules (paragraphs 3(b)(viii), (b)(ix)(1)); 2. The Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to Policy (paragraph 4(a)(ii) and Rules (paragraph 3(b)(ix)(2)); and 3. The disputed domain name was registered and is being used in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b) and Rules (paragraph 3(b)(ix)(3)).
In support of these legal contentions, the Complainant argues that the Complainant and its PETPLAN trademark is known internationally, with trademark registrations across numerous countries; that it has marketed and sold its goods and services using this trademark since 1997, which precedes the Respondent’s registration of the disputed domain name on January 20, 2020.
The Complainant argues further that, in registering and using the disputed domain name, the Respondent intended to cause confusion among Internet users as to the source of the disputed domain name, and that in doing so, it had engaged in bad faith, contrary to Policy paragraph 4(b)(iv).
In support of these arguments, the Complainant asserts that, the Respondent knew or ought reasonably to have known at the time of it registering the disputed domain name, of the following: the existence of the Complainant’s well known trademark; its use of its trademark; its extensive engagement and success in as a provider of pet insurance internationally and in the US; and that, the Respondent’s use of that knowledge in registering and using that name constituted bad faith.
In further support of its contentions, the Complainant provides evidence of its 40 years of business in the sale of pet insurance, the national, regional and global markets for its products, its sales record and reputation in the pet insurance sector, notably in the US. It also provides evidence of awards it has received in providing such products and services to its customers.
B. RespondentThe Respondent did not submit any formal response in this proceeding.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has rights in the PETPLAN trademarks identified above. Registering those trademarks constitutes evidence that it has satisfied the threshold requirements of having trademark rights for the purpose of establishing its standing to file a UDRP claim. “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” (WIPO Overview 3.0 at section 1.2.1).
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark.
In this respect, the Panel notes that the generic Top-Level Domain (“gTLD”) in a domain name, such as “.com” constitute standard registration requirements and therefore is disregarded in determining whether a disputed domain name is confusingly similar to the Complainant’s trademark. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at section 1.11.1 (“WIPO Overview 3.0”)).
Second, the disputed domain name reproduces the Complainant’s trademark with the addition of the term “affordable”. Previous UDRP panels have repeatedly held that the addition of other terms, omission or alteration of punctuation and letters within a disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark (See e.g. Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.,
WIPO Case No. D2000-1259; Pet Plan Ltd v. Graham Walsh, Isnup.com,
WIPO Case No. D2020-0541).
The Respondent’s inclusion of the word “affordable” in the disputed domain name is discussed under the third element of this decision. See e.g. Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net,
WIPO Case No.D2015-2042. See WIPO Overview 3.0 at section 1.8.
The Panel therefore holds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsThe Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted the Complainant’s prima facie case. See WIPO Overview 3.0 at section 2.1.
The Complainant has its trademark registered with the USPTO, CIPO, UKIPO, and the EUIPO, and provides evidence of the validity and its ownership of the trademarks, claiming that the Respondent lack rights or legitimate interests in a name corresponding to the disputed domain name.
The Complainant has provided reasonable evidence that it has not authorized the Respondent to use its trademark. The Respondent is not sponsored by or otherwise affiliated with the Complainant. The Complainant has not provided the Respondent with permission, whether directly or through an agent, to use the Complainant’s trademarks.
The Respondent is not commonly known by the disputed domain name, contrary to the Policy. See Policy, 4(c)(ii). See also World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,
WIPO Case No. D2008- 0642. WhoIs information disclosed by the Registrar demonstrates further that the Respondent has no other right or legitimate interest in that name. The Registrant’s surname does not resemble the disputed domain name. Nor has the Respondent acquired authorization to use the disputed domain name by any other legitimate means that complies with Policy 4(c)(ii). In support of this interpretation of the Policy, see e.g. Moncler S.p.A. v. Bestinfo,
WIPO Case No. D2004-1049.
Based on the foregoing, the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe Panel determines that the Respondent has both registered and is using the disputed domain name in bad faith.
The Respondent is not making a bona fide offering of goods or services, nor is the Respondent engaged in a legitimate, noncommercial and fair use of that name. On the contrary, the Respondent is using the disputed domain name to redirect Internet users to the Respondent’s website at “www.chasebruder.wixsite.com” where the Respondent offers and attempts to sell the products of the Complainant’s competitors. In selling competing goods, through a disputed domain name that reproduces in its entirety the Complainant’s trademark without the authorization of the Complainant and directing Internet traffic to the Respondent’s website to sell goods and services that complete with those sold by the Complainant, constitutes a bad faith offering of goods or services, contrary to Policy 4(c)(iii). Indeed, “It would be unconscionable to find a good faith offering of services,” to use a domain name that is confusingly similar to the Complainant’s trademark and in respect of which the Respondent has no rights nor legitimate interests, to offer products that directly compete with the Complainant’s products and registered trademark. See Pet Plan Ltd v. Moniker Privacy Services / VPI Pet Insurance Team, Veterinary Pet Insurance,
WIPO Case No. D2018-0854.
In so holding, the Panel recognizes that the Respondent registered the disputed domain name on January 20, 2020, some years after the Complainant registered its internationally known trademark with UKIPO in 1997 and with USPTO in 2006. While this alone does not conclusively establish that the Respondent’s registration of the disputed domain name was in bad faith, the fact that the Respondent “registered a well-known trademark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,
WIPO Case No. D2000-0911. In this regard, the Panel notes that while the Respondent signed the delivery record of the Written Notice, he did not submit any formal response in this proceeding.
It is entirely reasonable to conclude further, that the Respondent (who sells products competing with the Complainant’s products) was most likely to be aware that, in registering the disputed domain name, it was taking advantage of the attractiveness of the Complainant’s trademark in bad faith. In particular, the product and service that the Respondent intended to offer at the time of registering the disputed domain name was of the same kind as the product offered for sale by the Complainant. The Complainant’s trademark is internationally known, as is evidenced on the record by its history of registering trademarks internationally, including in the US where the Respondent is located. On comparable registration in bad faith of a confusingly similar domain name in competition with the Complainant’s trademark, see e.g. Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,
WIPO Case No. D2014-1754.
As a result, “given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the trademarks prior to registering the disputed Domain Name” Caesar World, Inc. v. Forum LLC,
WIPO Case No. D2005-0517.
In addition to registering the disputed domain name in bad faith, the Respondent also used it in bad faith. Firstly, the reasonable inference arising from the Respondent adding the term “affordable” to the Complainant’s trademark in the disputed domain name, is to attract Internet users to its website. The Panel further notes that the Respondent promotes the competing products as “AffordablePetPlans.com” (with the two letters “p” capitalized).
The record evidences that the Complainant emailed a cease and desist letter to the Respondent on March 12, 2020, advising the Respondent of his unauthorized use of the Complainant’s trademark and requesting that the disputed domain name be transferred to the Complainant. The Respondent responded that its website, “has nothing to do with a name called pet plan” and proposed instead that the Respondent and the Complainant work together on a pet insurance referral mechanism. However, in a further exchange, the Respondent wrote to the Complainant stating: “you do not own the trademark...affordable pet plans”. The Respondent failed to respond to further email from the Complainant. The Complainant then filed the complaint in accordance with the Rules. The Respondent’s failure to respond to the Complainant leaves the Complainant’s case unrebutted, see Mistral International BV v. Domains by Proxy, LLC / John Dickson, Windsurfing Toronto,
WIPO Case No.D2019-1400.
The Panel does not infer that the Respondent was required to transfer the disputed domain name to the Complainant, compliantly, according to the Complainant’s demand. Nor was the Respondent required to desist from responding to the Complainant’s demand. What the Panel does conclude is that, in light of the circumstances identified above, a finding of bad faith registration and use of the disputed domain name is reasonably inferred.
7. DecisionFor 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
Leon Trakman
Sole Panelist
Date: June 27, 2020