The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 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 September 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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.
The Center appointed Ellen B Shankman as the sole panelist in this matter on November 3, 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 date of the Domain Name registration is May 7, 2021.
The Complainant claims that it has spent a considerable amount of time and money protecting its intellectual property rights. The Complainant claims first use in commerce of its PETPLAN trademark at least as early as 1997 and provided evidence of multiple trademark registrations for the PETPLAN mark, including, inter alia: United States Registration No. 3161569 registered on October 24, 2006 in classes 16, 36, and 41 and United Kingdom (“UK”) Registration No. UK00002052294 registered on January 17, 1997.
The Complainant has also registered domain names containing the trademark PETPLAN prior to the registration of the Domain Name, including, inter alia:
The Complainant also provided evidence of screenshot of the Domain Name resolving to a website featuring pay-per-click (“PPC”) third-party links for business accounts, as well as evidence of the Domain Name being offered for sale in an amount arguably exceeding the Respondent’s out-of-pocket expenses.
The Panel also conducted an independent search to determine that the Domain Name currently resolves to an inactive “error” page with a security warning.
5. Parties’ Contentions A. ComplainantThe Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. Current territories in which the Complainant’s mark is licensed are the United States, Canada, Australia, New Zealand, Brazil, Germany, France, Spain and the Netherlands. The Complainant offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals. In addition, it offers insurance to pet care professionals and a pet finding service. The company was founded in 1976 and is based in Brentford, United Kingdom. It is now a subsidiary of Allianz Insurance plc – one of the largest general insurers in the UK and part of the Allianz Global Group, one of the world’s foremost financial services providers.
The Complainant alleges that it has continually operated under the Petplan name and has used the PETPLAN mark in connection with its pet insurance products for over 40 years. The Complainant has won numerous awards including the World Branding Awards – Brand of the Year 2017-2018 and 2019- 2020, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017. In summary, the Complainant’s brand is well recognized and respected worldwide, and in the industry. The Complainant has made significant investment to advertise and promote its PETPLAN trademark worldwide in the media and in the Internet over the years.
The Complainant contends that the Domain Name can be considered as capturing, in its entirety, the Complainant’s PETPLAN trademark and simply adding the generic terms “account” and “go” as a prefix to the trademark. The mere addition of these generic terms to the Complainant’s trademark does not negate the confusing similarity between the Domain Name and the Complainant’s trademark. Additionally, the Respondent’s use of the Domain Name contributes to the confusion. The Respondent is using the Domain Name as a PPC site, which suggests that the Respondent intended the Domain Name to be confusingly similar to the Complainant’s trademark as a means of driving Internet traffic to the site. In addition, the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites. The Domain Name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the Domain Name, which serves as further evidence of the Respondent’s lack of rights or legitimate interests. Furthermore, at the time of filing the Complaint, the Respondent was using a privacy service, which past UDRP panels have also found to equate to a lack of right or legitimate interest.
The Complainant further alleges that by registering a Domain Name that incorporates the PETPLAN trademark in its entirety with a prefix of “account” and “go”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its
By creating this likelihood of confusion between the Complainant’s trademarks and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple PPC links posted to the Respondent’s website. Further, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which serves as further evidence of bad faith registration and use.
In addition, the Complainant claims that the Respondent has engaged in a bad faith pattern of “cybersquatting.” The Respondent here has previously been involved in numerous cases. The below-listed cases which provide evidence of the pattern of cybersquatting in which the Respondent is engaging:
- Serena & Lily, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2021-0568;
- Carvana, LLC v. Registrations Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundaction Comercio Electronico,
WIPO Case No. D2020-2756;
- Tommy Bahama Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2020-2484;
- Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2020-3426;
- O2 Worldwide Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2020-0082.
To summarize the Complaint, the Complainant is the owner of registrations for the trademark PETPLAN, in respect of pet insurance. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that incorporates the trademark in its entirety with a prefix of “account” and “go”, and the addition of the “.com” generic Top-Level Domain (“gTLD”) extension, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, and shows that the Respondent was familiar with the Complainant’s mark and goods and services. The addition of these does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for PETPLAN.
Further, the Panel finds that the Domain Name integrates the Complainant’s mark and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the descriptive terms “account” and “go” to the Domain Name does not change the overall impression that the trademark of the Complainant is recognizable, and it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,
WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,
WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not commonly known by the Domain Name, does not have permission to use the Complainant’s mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to a PPC page, almost certainly for the Respondent’s commercial gain, which is not a legitimate noncommercial or fair use.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of and on balance of the facts set forth within this Complaint, the Panel finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark.
A respondent’s use of a complainant’s mark — for said respondent’s commercial benefit — to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy, paragraph 4(b)(iv). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.
The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.
In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb,
WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc.,
WIPO Case No. D2003-0230. See also WIPO Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).
The Panel also finds that even though the Domain Name currently resolves to an inactive page, this does not preclude a finding of registration and use in bad faith where: “[…] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (SeeTelstra Corporation Limited v. Nuclear Marshmallows, supra). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Further, the Panel finds that the Respondent’s registration of other domain names that incorporate third-party marks support a “pattern” of bad faith, and this is consistent with section 3.1.2 of the WIPO Overview 3.0, which states that:
“A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.”
Moreover, the Domain Name is being offered for sale in an amount arguably exceeding the Respondent’s out-of-pocket expenses.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name for commercial gain, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name
Ellen B Shankman
Sole Panelist
Date: November 8, 2021