The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Gino Mantua, Mantua Insurance Group, LLC, United States of America (the “United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 August 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 August 19, 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on September 30, 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 BackgroundThe Complainant is a British company founded in 1976, which provides pet insurance for domestic and exotic pets in the United Kingdom and around the world through licensees. It operates under the name “Pet Plan Ltd.”.
The trademark PETPLAN is one of the leading brand in the field of pet insurance, at least in the United States.
The Complainant is the owner of various registrations worldwide for the trademark PETPLAN, including:
- United States trademark registration No. 3161569 registered on October 24, 2006 in classes 16, 36 and 41;
- European Union trademark registration No. 000328492, registered on October 16, 2000 in class 36; and
- European Union trademark registration No. 001511054, registered on December 18, 2001 in classes 16, 25, 26, 35, 36, 41 and 42.
The Respondent registered the disputed domain name on January 14, 2021.
The disputed domain name resolved to a webpage offering sponsored click-through advertising links to third-party websites. The website suggests that the disputed domain name may be available for sale.
The Complainant sent cease and desist letters to the Respondent on March 29, April 8 and April 19, 2021. The Respondent did not answer.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name reproduces its well-recognized PETPLAN trademark and that such trademark is readily recognizable in the disputed domain name so that it is confusingly similarity with the PETPLAN trademark.
The Complainant has not licensed or otherwise permitted the Respondent to use the PETPLAN trademark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name.
The Complainant claims that the Respondent does not show any bona fide or legitimate interest under the disputed domain name as it used to resolve to a website with pay-per-click third-party links competing with the Complainant.
The Complainant alleges that given its international reputation and pre-existing UDRP proceedings involving both the Complainant and the Respondent (namely Pet Plan Ltd v. Gino Mantua,WIPO Case No. D2020-3360), the Respondent was aware of the PETPLAN trademark at the time of registering the disputed domain name.
The Complainant further contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website aiming to increase traffic on its website for its own pecuniary gain.
Finally, the Complainant considers that the Respondent’s bad faith is also inferred by its involvement in a cybersquatting pattern and its ignorance of the cease and desist letters sent by the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant owns various trademark registrations for the mark PETPLAN.
The disputed domain name reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with the terms “my” at the beginning and “helpers” at the end.
UDPR panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark PETPLAN is clearly recognizable in the disputed domain name. The mere addition of the terms “my” and “helpers” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, may be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsBased on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.
The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the Respondent used the disputed domain name in connection with a website containing pay-per-click links to third-party websites. This type of use does not constitute bona fide offering of goods and services.
Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithPETPLAN is one of the leading brands in the field of pet health insurance in particular in the United States, where the Respondent is established. Moreover, the Respondent has already been involved in UDRP proceedings in relation to the registration of a domain name reproducing the trademark PETPLAN, namely the
Therefore, the Respondent could not ignore the Complainant’s trademark when it registered the disputed domain name on January 14, 2021, and the Panel finds that the Respondent registered the disputed domain name in bad faith.
In addition, the presence of sponsored links to third party websites on the page to which the disputed domain name resolves supports a finding of use in bad faith. Indeed, the redirection to a webpage with sponsored links suggests an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee,WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief,WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776; and AllianceBernstein LP v. Texas International Property Associates,WIPO Case No. D2008-1230).
The failure of the Respondent to submit a response to the cease and desist letters sent by the Complainant reinforces the inference of bad faith.
The Panel accepts therefore that the disputed domain name is being used in bad faith.
In view of the above, it is not necessary to decide whether the behavior of the Respondent amounts to a pattern of cybersquatting, as alleged by the Complainant. The record does not allow for such an assessment, as the Complainant cites only the decision involving the domain name
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.
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
Anne-Virginie La Spada
Sole Panelist
Date: October 15, 2021