The Complainant is Pet Plan Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Gino Mantua, United States of America (“United States”), 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 December 10, 2020. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2020, 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 December 15, 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 December 16, 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 December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. The Respondent sent informal email communications to the Center on January 5 and January 14, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on January 29, 2021. 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, founded in 1976, provides insurance for domestic and exotic pets both in the United Kingdom and through licensees in various other jurisdictions, including the United States. It is the owner of trademark registrations in multiple jurisdictions, including United Kingdom trademark registration number UK00002222270 for PET PLAN and PETPLAN, registered on April 6, 2001, specifying goods and services in multiple classes, including insurance brokerage related to pets; and United States trademark registration number 3161569 for PETPLAN in a stylized script, registered on October 24, 2006, specifying goods and services in multiple classes, including insurance services. Those trademark registrations remain current. The Complainant is also the registrant of various domain names including The Respondent is an insurance agent at Healthcare Solutions Team. His profile page on that business’s website displays a photograph of him with a pet dog on his lap and ends with a request to help support a local humane society, with an advertisement for one such society “Helping Pets in Need Since 1953”. The disputed domain name was registered on February 23, 2020. It resolves to a webpage displaying The disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark. The disputed domain name can be considered as capturing, in its entirety, that trademark and simply adding the term “helpers” to the end of the trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. The disputed domain name was registered and is being used in bad faith. Given the Respondent’s professional association, the fact that the Complainant also operates in the insurance space, and the composition of the disputed domain name, it is more likely than not the Respondent was fully aware of the Complainant, its brand and its business at the time of the registration. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith. B. Respondent The Respondent submits that he purchased the disputed domain name with the intent to put it in use at some future date in conjunction with several other domain names that he owns own with the name “helpers” included in each. The disputed domain name does not necessarily have anything to do with insurance. The disputed domain name has never been in service or been advertised since the Respondent registered it. The Respondent is a small independent insurance broker located in a small town in Illinois, United States. He did not deliberately purchase the disputed domain name to infringe on, directly compete with, nor did he have any knowledge of the Complainant’s existence prior to the Complaint. The Complainant had the same opportunity to purchase the disputed domain name as the Respondent did. The Respondent recommends that the Complainant make him an offer or dismiss this case. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the PETPLAN mark. The disputed domain name wholly incorporates the PETPLAN mark as its initial and only distinctive element. It also incorporates the dictionary word “helpers” but, this is insufficient to avoid a finding of confusing similarity between a domain name and a trademark. The PETPLAN mark is clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (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 trademark 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 trademark or service mark at issue. The disputed domain name resolves to a webpage that displays PPC links and offers a service to obtain the disputed domain name. The PPC links operate for the benefit of the Respondent, or the operators of the linked website, or both. The disputed domain name is confusingly similar to the Complainant’s PETPLAN trademark but the Complainant submits that the Respondent is not sponsored by or affiliated with Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. Accordingly, the Panel does not consider this use to be in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is this a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is named “Gino Mantua” and his business is named “Healthcare Solutions Team”. There is no evidence the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he submits that he intended to put the disputed domain name to use at some future date but confirms that the disputed domain name has never been in service. The Panel notes that there is no evidence of any preparations to use the disputed domain name in any other way than as it is used at present. The Respondent argues that the Complainant had the same opportunity to purchase the disputed domain name as the Respondent did. In effect, he argues that his registration has priority over the Complainant’s claim. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case regarding the second element of the Policy. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] 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] web site or location.” The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registrations, including its trademark registration for PETPLAN in the United States, where the Respondent is resident and does business. The disputed domain name wholly incorporates the PETPLAN mark as its initial element. The Complainant has made long-standing use of its PETPLAN trademark, including in the United States, in connection with its pet insurance and other services and it has acquired a considerable reputation in the insurance industry. The Respondent works in the insurance industry and could be expected to be aware of the Complainant, particularly since his website demonstrates his particular interest in pet welfare. In view of all these circumstances, the Panel considers it unlikely that the incorporation of the PETPLAN trademark in the disputed domain name was a coincidence. Rather, the Panel considers it likely that the Respondent knew of the Complainant’s PETPLAN trademark at the time that he registered the disputed domain name and deliberately targeted it. The Respondent alleges that he has registered other domain names incorporating the word “helpers”. There is no evidence on the record to substantiate this assertion and no explanation as to how this might imply that he did not know of the Complainant’s trademark at the time that he registered the disputed domain name. The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s PETPLAN mark, in connection with a webpage that displays PPC links and offers a service to obtain the disputed domain name. Given these circumstances and the findings in section 6B above, the Panel considers that, on the balance of probabilities, the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s PETPLAN trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on that website within the terms of paragraph 4(b)(iv) of the Policy. The Respondent argues that the disputed domain name does not necessarily have anything to do with insurance and that he did not register it to compete directly with the Complainant. However, considering the use that the Respondent is making of the disputed domain name, this does not alter the Panel’s conclusion. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name Matthew Kennedy
Pay-Per-Click (“PPC”) links for websites related to farms and animals, including pet care supplies. The webpage includes a notice advertising a domain broker service that may be able to obtain the disputed domain name for an interested Internet user. 5. Parties’ Contentions A. Complainant
Sole Panelist
Date: February 12, 2021
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