The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is paulette hamel, United States of America (“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 December 6, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 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 December 14, 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 December 17, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. From January 2, 2022, to January 31, 2022, the Respondent sent several email communications to the Center indicating possible settlement. On January 25, 2022, the Complainant sent an email communication to the Center indicating that, as no settlement has been reached, it wishes to proceed. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties of the commencement of Panel appointment procedure on January 25, 2022.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 4, 2022. 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 United Kingdom incorporated subsidiary of Allianz Insurance Plc – one of the largest general insurers in the United Kingdom and part of the Allianz Global Group, one of the world’s foremost financial services providers. The Complainant operates a business selling pet insurance and ancillary offerings such as insuring pet care professionals and a pet finding service. The Complainant holds a portfolio of registrations for the trademark PETPLAN, and variations of it, in numerous countries, including United States Registration No. 3161569, registered on October 24, 2006.
The Complainant owns numerous domain names that comprise or contain the trademark PETPLAN, including the domain name
The Disputed Domain Name
The Complainant cites its trademark registrations including United Kingdom Trade Mark No. UK00002052294, registered on January 17, 1997, and numerous other registrations around the world, for the mark PETPLAN, as prima facie evidence of ownership.
The Complainant submits that the mark PETPLAN is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the PETPLAN trademark and that the similarity is not removed by the addition of the letter “s” or the words “in” and “place” or the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names” and none of the circumstances set out in paragraph 4(c) of the Policy apply.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark, and the use to which the Disputed Domain Name has been put as a PPC parking page featuring links to third-party websites, some of which directly compete with the Complainant’s business.
B. RespondentThe Respondent sent several email communications to the Center, regarding inter alia the nature of the dispute, attempts to settle the matter amicably, and information about appropriate contact details of the Respondent. However, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PETPLAN in numerous countries including Canada, the United Kingdom, and the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the PETPLAN trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark PETPLAN; (b) followed by the letter “s”; (c) followed by the word “in”; (d) followed by the word “place”; and (e) followed by the gTLD “.com”.
It is well established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “petplansinplace”.
As the relevant mark is incorporated in its entirety and as such is recognizable in the Disputed Domain Name, in line with previous UDRP decisions, this Panel finds the Disputed Domain Name is confusingly similar to the Complainant’s PETPLAN trademark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).
While the term “petplan” is a contraction of two descriptive words “pet” and “plan”, the combined term “petplan” has no ordinary meaning other than in connection with the Complainant. Furthermore, there is no indication that the Respondent was commonly known by the term “petplan” prior to registration of the Disputed Domain Name and the Complainant claims that it has not licensed, permitted, or authorized the Respondent to use the trademark PETPLAN.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and is misleadingly directing Internet users to a PPC landing web page with links advertising: “Home Health Care”, “Health Care Providers”, “Health Care Plans”, “My Pet Insurance”, “Health care Products”, and “The Farmer’s Dog Dog Food”, thereby taking unfair advantage of the owner’s goodwill and reputation for its own benefit.
On any objective view, the Respondent is not a reseller with a legitimate interest in the Disputed Domain Name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. The Panel finds that because the Disputed Domain Name consists of the Complainant’s trademark in its entirety with the letter “s” and the words “in and “place”, it carries a risk of implied affiliation and cannot constitute fair use given the suggested sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).
Further, the Respondent’s use of the Complainant’s mark to direct users to the PPC page advertising competing products does not support a claim of legitimate noncommercial or fair use (see WIPO Overview 3.0, section 2.5.3).
The Respondent did not submit a formal Response and has not come forward with any claims or evidence of rights or legitimate interests in the Disputed Domain Name in its informal communications.
This Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of any evidence to the contrary from the Respondent, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the PPC website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark PETPLAN when it registered the Disputed Domain Name (see Pet Plan Ltd v. Wwwsmithseo / William Smith / Whoisguard Protected / Whoisguard, Inc., WIPO Case No. D2015-1083(“the trademark PETPLAN is so widely known in the fields of pet insurances, that it is inconceivable that the Respondent might have registered a domain name containing this mark without knowing of it”)).
This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well-known trademark (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”).
The diversion of Internet users for commercial gain is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name about 25 years after the Complainant established trademark rights in the PETPLAN mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ misdirection caused by the incorporation of the Complainant’s trademark in the Disputed Domain Name in its entirety. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see WIPO Overview 3.0, section 3.5).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark PETPLAN and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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
Nicholas Weston
Sole Panelist
Date: February 15, 2022