The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Ashley Thwaites, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2021, 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 January 18, 2021, 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 January 20, 2021. 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 January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2021. The Respondent submitted an informal response to the Center on the same day after the default was sent. The Center appointed Gareth Dickson as the sole panelist in this matter on February 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 provides pet insurance in various territories around the world through a network of licensees and has provided details of a number of figurative trade mark registrations, a word mark registration, and a series mark registration comprising a combination of word and figurative marks for PETPLAN (the “Mark”) in relation thereto, including the following: - Canadian trade mark registration number TMA463628 (word), applied for on July 31, 1989 and registered on September 27, 1996, for providing insurance broking services in connection with health insurance for domestic animals; - UK trade mark registration number 2052294 (stylized / figurative), applied for on January 19, 1996 and registered on January 17, 1997, for insurance brokerage relating to pets; - European Union trade mark registration number 000328492 (figurative), applied for on July 11, 1996 and registered on October 16, 2000, for insurance brokerage relating to pets; and - US trade mark registration number 3161569 (stylized / figurative), applied for on August 26, 2004 and registered on October 24, 2006 for insurance and other services relating to animals. The Complainant has won awards within the pet insurance industry for its products. It is active on social media and operates a website at the domain name “www.petplan.co.uk”. The disputed domain name was registered on April 23, 2020. It directs Internet users to a registrar holding page, which has no content. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it is comprised of the plural form of the Mark with the addition of the descriptive prefix “my” (i.e., “mypetplans” as opposed to “petplan”), under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, and that the Respondent must have been commonly known by the disputed domain name at the time of registration in order to have a legitimate interest in it. The Complainant also argues that there is no evidence that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name, or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Mark is known internationally and the mere fact that the Respondent registered it significantly after the Mark became “famous and well-known” demonstrates the Respondent’s bad faith. It says the Respondent should have known of the Mark and the various trade mark registrations for it and that the mere registration of domain names containing well-known trade marks constitutes bad faith per se. It asserts that the fact that the Respondent has registered the “.co.uk” country-code Top Level Domain equivalent of the disputed domain name “makes it illogical to believe” that the Respondent registered the disputed domain name “without specifically targeting” the Complainant. It also contends that the disputed domain name, even though it resolves to a holding page with no content, “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”; that “there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name”; and that “any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith”. The Complainant notes that the Respondent failed to respond to three “cease and desist” letters from the Complainant’s representatives sent via a registrar webform (and it appears, not to the Respondent directly after postal, email and phone contact details were disclosed to the Complainant in the context of this proceeding). There is no evidence from the registrar or otherwise that the Respondent received any of these letters. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent did, however, reply to the Center after receiving the notice of default (indicating that the contact information he had given to the Registrar is accurate) to inform the Center that: “This dispute has been resolved via Nominet and the domain has been transferred to the complainant.”, apparently not appreciating that the domain name dispute resolution services provided by Nominet and the Center are different. (The Panel notes that a search for the Respondent’s name on the Nominet site does not reveal any “petplans” cases and so surmises that the reference to the resolution of that dispute could have been via informal mediation and not a recorded panel decision on the merits.) 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Section 1.8 of the WIPO Overview 3.0 further provides that: “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 Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety and the Mark is recognisable within the disputed domain name. The addition of the generic prefix “my” and the pluralisation of the Mark do not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0 the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. As to whether or not the Complainant has established its prima facie case, the Complainant’s submission that the Mark is “famous and well-known” is somewhat cursory and based primarily on registration in multiple jurisdictions and the longevity of the Complainant’s use of the Mark and the evidence that the Complainant has won awards for its pet insurance products. Even assuming such prima facie case is met, this case is slightly more complicated than a typical case in that the Respondent appears to be genuinely trading in an area tangential to the Complainant’s services, i.e., veterinary appointment docketing in the case of the former, and pet insurance in the case of the latter. At the same time, prior UDRP decisions also note that the combination in a disputed domain name of the word “my” together with a trade mark tends to increase the risk that a user may perceive the domain name as being offered by the trade mark owner. In all events, the Panel must assess, in light of the evidence before it, whether the Respondent has targeted the Complainant’s trade mark and its reputation, or whether the Respondent may have independent rights or legitimate interests in respect of that domain name – the burden of showing both the former (targeting), and the absence of the latter (Respondent’s legitimate interest), falling on the Complainant. In the absence of evidence of targeting the Mark and its reputation, the level of inherent distinctiveness in that mark is relevant: in contrast to an inherently distinctive trade mark, a sign comprised of dictionary words that may obtain acquired distinctiveness (or secondary meaning) through use may be used in descriptive non-infringing ways. While the Complainant relies on the alleged fame and reputation of the Mark, on the basis of the evidence before it, the Panel is not prepared to conclude that the Respondent must have targeted the Complainant simply because the disputed domain name appends “my” to the Mark. It is noted that the Mark is comprised of words which, notwithstanding that they have been registered in multiple jurisdictions by the Complainant, retain descriptive qualities, and that the Respondent appears to be operating a genuine pet-related service called MyPetPortal. In this respect, the Panel notes its ability to undertake “limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”. See Section 4.8 of the WIPO Overview 3.0. The Panel in this case conducted a brief Internet search for the Respondent’s name and almost immediately was able to identify, from publicly-available official governmental resources, an individual in the same geographical location as the Respondent who is a director of several properly incorporated companies including one related to pets that has no apparent association with insurance-related services – rather they relate to managing veterinary appointments via a dedicated app. That company, which appears to be the result of a bona fide intent to provide goods or services rather than a pretextual attempt to justify the registration of the disputed domain name, was incorporated one day before the disputed domain name was registered and generally points to a lack of indicia of cybersquatting intent on the part of the Respondent. See Section 2.2 of the WIPO Overview 3.0. This additional evidence suggests, on the balance of probabilities, that the identified company director is the Respondent, and that the Respondent intended to use the disputed domain name for the newly-incorporated incorporated company and not necessarily to target the Complainant (as to which, see below regarding future use of the disputed domain name). While the Panel is mindful that the registration of the particular terms in the disputed domain name vary from the MyPetPortal moniker, there is a plausible connection (including with the “my” appendage) sufficient to overcome the Complainant’s prima facie case. This confirms the conclusion that while the Respondent may very well have been aware of the Complainant, he did not necessarily target the Complainant with a cybersquatting intent by the registration of the disputed domain name, at least based on the record before the Panel. Had there been evidence that the Respondent was targeting the Complainant or the insurance market with the disputed domain name i.e., through a particular use of the disputed domain name, or had there been evidence that the Respondent had received the Complainant’s cease and desist letters but had ignored them, as to which see further section 6.C. below, the outcome of this analysis may have been different. However, as clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Finally, while it may normally be the case, the Panel cannot accept the Complainant’s assertion that a respondent must have been commonly known by a domain name at the time of registration in order to have a legitimate interest in it as a hard-and-fast rule, especially in a situation such as here where the incorporation of a company and registration of a domain name occur within a day of each other. Having reviewed and weighed the available evidence, and while acknowledging the fact that the Respondent has not participated in these proceedings, the Panel finds that the Complainant has not met its burden under this element. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and that the Respondent has not participated in these proceedings. However, as noted above the evidence presented by the Complainant is insufficient to conclude that the Respondent targeted the Complainant when it registered the disputed domain name or that it is being used in bad faith. The Respondent is not making any use of the disputed domain name and did not use a privacy or proxy service to attempt to hide their contact details. On the contrary, the contact information revealed to the Complainant and the Respondent’s reply to the Center using the email address listed on the WhoIs suggest that a legitimate postal address, phone number, and email address have all been provided by the Respondent. Although not in any way dispositive of the question of bad faith, this does undermine the Complainant’s inference of bad faith. The Panel is aware that the Respondent did not respond to any of the three cease and desist letters addressed to it by the Complainant. However, each of these letters appears to have been sent via a webform through a page on the registrar’s website, and there is no evidence that the Respondent received any of them. The Panel understands that having to send messages via webforms is unsatisfactory and has a great deal of sympathy for rightsholders adversely affected by this arrangement, even if the Complainant could have attempted to mitigate its effects by emailing the Respondent directly upon receiving the Respondent’s contact information, after which the Complainant was given five days to amend its Complaint in light of that disclosure. As such, the Panel is unable to draw an inference from the Respondent’s lack of response to these registrar webform messages. As regards bad faith, the Complainant generally relies on its reputation and an inference that the Respondent must have targeted the Mark. Those inferences as to the Respondent’s motives are not supported by the evidence submitted. Furthermore, the “limited factual research into matters of public record” undertaken by the Panel to gain greater clarity on the Respondent’s motives do not support the Complainant’s position but, in fact, that information seems to point to a genuine business offering by the Respondent, as cited in section 6.B. above. As such, the Complainant has failed to prove bad faith registration and use of the disputed domain name by the Respondent. Although that is sufficient to dispose of the Complaint, the Panel wishes to make two further observations. The first observation is that what is set out above relates solely to the Panel’s assessment of the Complaint in light of the requirements of the Policy, which is aimed at combatting clear cases of cybersquatting. Nothing set out above should be interpreted as the Panel’s position on any action the Complainant may seek to pursue against the Respondent outside of the Policy. The second observation is that a Panel can, in limited circumstances, record in a decision dismissing a complaint its opinion that such dismissal should be “without prejudice” to the Complainant’s ability to refile a case against the same respondent in respect of the same domain name should later-known facts and circumstances support such action, e.g., if after the publication of this decision the Respondent uses the disputed domain name in a manner that shows cybersquatting intent, that fact (which is not available to the Complainant given the current non-use of the disputed domain name) may be taken into account by a subsequent panel. See section 4.18 of the WIPO Overview 3.0. 7. Decision For the foregoing reasons, the Complaint is denied. Gareth Dickson
Sole Panelist
Date: March 31, 2021
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