The Complainant is Pet Plan Ltd., United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is William (chase) Bruder, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 22, 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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2021. The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 25, 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 was founded in 1976 and is based in Brentford, United Kingdom. It provides pet insurance for domestic pets (including dogs) and exotic pets amongst others in the countries where the parties are located, i.e., the United Kingdom and the United States (in the latter through the licensee Fetch Insurance Agency, LLC). The Complainant is the registered owner of several trademarks throughout the world and particularly invokes the following trademarks: - United States trademark PET PLAN, registered on October 24, 2006 under No. 3161569 for goods/services in classes 16, 36, 41; - Stylized UK trademark PETPLAN, registered on January 17, 1997 under No. 00002052294 for services in class 36; - European Union Trademark PETPLAN No. 001511054 registered on December 18, 2001 for services in class 36. According to the Registrar’s verification response, both disputed domain names have been registered on June 9, 2020. It results from the undisputed evidence provided by the Complainant that the disputed domain names redirect to websites featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the websites to which the disputed domain names resolve feature multiple third-party links for pet care supplies and dog medicine. On September 23, and October 5, 2020, the Complainant sent a cease and desist letters to the Respondent for each of the disputed domain names asking amongst others for the transfer said domain names. No reply to those letters has been received by the Complainant. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain names are confusingly similar to the registered trademarks in which the Complainant has rights. In fact, both domain names Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Complainant did not grant the Respondent any right to use said trademarks. Furthermore, the Complainant states that the Respondent is not commonly known by the disputed domain names. Finally, the Complainant contends that using the disputed domain names to host a parking page comprising pay-per-click (“PPC”) links does not represent a bona fide offering that would give rise to rights or legitimate interests in a domain name since they compete with or capitalize on the reputation and goodwill of the Complainant’s mark. As such, the Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy. Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain names in bad faith. The Complainant submits that the Respondent, at the time of registration of the disputed domain names, knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. Furthermore, the Complainant is of the opinion that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering two domain names that incorporate the Complainant’s long-standing PETPLAN trademark along with the related terms “doggie” and “pros”, which demonstrates that the Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the domain names and websites. In addition, the Complainant points out that where the disputed domain names incorporate the entirety of the Complainant’s PETPLAN trademark along with the dictionary terms “doggie” and “pros”, no plausible good-faith reason or logic is conceivable for the Respondent to have registered the disputed domain names. Finally, the Respondent here has previously been involved in other UDRP proceedings, which provides evidence of the pattern of cybersquatting in which the Respondent is engaging. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (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. The Panel is satisfied that the registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal elements PETPLAN, amongst others United States trademark PET PLAN, No. 3161569 registered for goods/services in classes 16, 36, 41, United Kingdom trademark PETPLAN (stylized), No. 00002052294 registered for services in class 36 and European Union Trademark PETPLAN, No. 001511054 registered for services in class 36. These trademarks moreover predate the creation date of the disputed domain names, which is June 9, 2020. Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks PETPLAN are fully included in the disputed domain names. Furthermore, it is the view of this Panel that the combination of the trademarks PETPLAN with the terms “doggie” and “pros” respectively, does not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks. “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” (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”). (In the case at hand, the additional term “doggie” is descriptive for the Complainant’s business who offers insurances for dogs (amongst others), while the term “pros” contained in the other disputed domain name could either be understood in the sense of “pros and cons”, i.e., as providing positive information on the Complainant’s insurance products, or as a “professional” offering the Complainant’s services.) Beside these descriptive terms, the relevant trademark remains recognizable in both of the disputed domain names. Finally, the addition of the letter “s” at the end of the disputed domain name Hence, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. Paragraph 4(a)(i) of the Policy is therefore satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must further establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names. First, it results from the evidence provided by the Complainant that the disputed domain names are currently connected to a default hosting parking page, featuring multiple links to commercial websites including such to competitors of the Complainant. This Panel is of the opinion that such use does not represent a bona fide offering of goods or services and can therefore not constitute legitimate interests under paragraph 4(c)(i) of the Policy. In fact, previous UDRP panels have found that such pages with commercial links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0). This is the case here, since the parking pages are not connected to the trademark PETPLAN but contain links to the Complainant’s competitors. Second, the Panel notes that there is no evidence in the record which could lead the Panel to conclude that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy. In addition, the Respondent does not appear to have any connection or affiliation with the Complainant. Finally, use of the disputed domain names for a parking page, featuring multiple links to commercial websites excludes any noncommercial use in the sense of paragraph 4(c)(iii) of the Policy from the outset. It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of a disputed domain names’ registration and use in bad faith. One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In the Panel’s view, the Respondent has intentionally registered the disputed domain names which identically contain the Complainant’s trademarks PETPLAN plus additional terms in the same industry. By the time the disputed domain names were registered, it is unlikely that the Respondent did not have knowledge of the Complainant and its marks PETPLAN, which are identically included in the disputed domain names. These findings are reinforced by the fact that before he registered the disputed domain names, the Respondent had been involved in another UDRP proceedings involving the same trademarks (Pet Plan Ltd v. William (chase) Bruder,WIPO Case No. D2020-1339). The Complainant also proved that the Respondent is using the disputed domain names to lead to a hosting parking page, with commercial links including links to the Complainant’s competitors. These facts confirm that the disputed domain names are used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Finally, the further circumstances surrounding the disputed domain names’ registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith: (i) the Respondent originally masked its identity behind a privacy shield; (ii) the Respondent did not answer to the cease and desist letters sent by the Complainant before the present proceedings have been initiated; (iii) the Respondent did not provide any formal response with conceivable explanation of its behavior within these proceedings so that no legitimate use of the disputed domain names by the Respondent is actually conceivable for the Panel; and (iv) the Respondent is engaged in a pattern of conduct since he did not only register the two disputed domain names but has additionally lost one previous UDRP proceeding initiated by the same Complainant before the Respondent registered the two domain names at issue in the present case and involving the same trademarks. In that case, the panel ordered transfer of the domain name In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 disputed domain names, Tobias Malte Müller
Sole Panelist
Date: February 8, 2021
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