The Complainant is Pet Plan Ltd., United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Paul Nash, United States of America (“United States”), represented by Lewis & Lin, LLC, United States.
The disputed domain names <dnapetplan.com> (the “Disputed Domain Name”) and <dnapetplans.com> (the “Additional Disputed Domain Name”) are registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
In this decision a reference to “Disputed Domain Names” is a reference to both the Disputed Domain Name and the Additional Disputed Domain Name.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Response was filed with the Center on July 19, 2019.
The Complainant submitted a Supplemental Filing on July 25, 2019, and on July 26, 2019 the Respondent filed a reply objecting to the Complainant’s Supplemental Filing.
The Center appointed John Swinson as the sole panelist in this matter on August 9, 2019. 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.
On September 9, 2019, the Panel issued Administrative Panel Decision Order No.1, granting the Complainant’s request to add the Additional Disputed Domain Name to this proceeding. The Panel invited the Respondent to provide a supplemental submission by September 13, 2019 to the Center limited only to the arguments and evidence regarding the registration and use of the Additional Disputed Domain Name.
The Respondent submitted his response to Administrative Panel Decision Order No.1 on September 12, 2019.
The Complainant is Pet Plan Ltd, a company incorporated in the UK. The Complainant provides pet insurance for domestic and exotic pets both in the UK and around the globe through various licensees. The Complainant was founded in 1976 and is now a subsidiary of Allianz Insurance plc. According to the Complaint, the Complainant has won a number of awards for its products and services.
The Complainant is the owner of a number of registered trade marks for PETPLAN, including Canadian registered trade mark number TMA463628, registered on September 27, 1996 (the “Trade Mark”). The Complainant is also the owner of domain names incorporating the Trade Mark, being <petplan.co.uk> and <petplan.com> (the “Complainant’s Domain Names”), registered on August 1, 1996 and acquired in 2014 respectively.
The Respondent is Paul Nash, an individual of the United States. The Disputed Domain Name was registered on March 1, 2019. At present, the website at the Disputed Domain Name redirects to “www.nutribiologic.com”, which is an active website that offers health supplements under the brand name of NutriBiologic and states that it is in the process of migration.
The Additional Disputed Domain Name was registered on July 2, 2019. At present, the Additional Disputed Domain Name resolves to a parking page with a statement that the website is “coming soon”.
According to the Respondent, the Respondent is the founder and President of NutriBiologic Inc. The Respondent states that he intends to use the Disputed Domain Names to offer DNA Personalized Evaluation & Treatment (PET) solutions for Personalized Lifestyle, Activity & Nutrition (PLAN) plans that he intends to offer in connection with his NutriBiologic business.
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Names capture the Trade Mark in its entirety. The addition of the generic term “dna” to the beginning of the Disputed Domain Names does not negate the confusing similarity between the Disputed Domain Names and the Trade Mark.
It is standard practice when comparing the Disputed Domain Names to the Trade Mark to not take the generic Top-Level Domain (“gTLD”) extension into account.
The Disputed Domain Names are confusingly similar to the Trade Mark.
No rights or legitimate interests
The Complainant owns and has the exclusive right to use the Trade Mark in commerce or in connection with the claimed goods and services.
The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent license, authorisation or permission to use the Trade Mark in any manner.
The Respondent is not commonly known by the Disputed Domain Names. The Respondent’s name and the Respondent’s company name do not resemble the Disputed Domain Names in any manner.
At present, the Respondent is using the Disputed Domain Name to redirect Internet users to “www.nutribiologic.com”. None of the terms “dna”, “pet” or “plan” taken separately, or combined, are relevant to the content of the website found at the Disputed Domain Name or the Respondent’s business and expertise in natural health and wellness solutions (for humans).
The use of a disputed domain name to redirect Internet users to content unrelated to the complainant does not automatically render the use of the disputed domain name legitimate.
Registered and used in bad faith
The Respondent’s registration of the Disputed Domain Names postdates the Complainant’s registration of the Trade Mark and the Complainant’s Domain Names by several years. The Complainant and the Trade Mark are known internationally and on the Internet. Performing searches across a number of Internet search engines for “dna petplan” returns multiple links referencing the Complainant and its business. The fact that the Respondent registered the Disputed Domain Names significantly after the Complainant and the Trade Mark became famous and well-known demonstrates that the Respondent registered the Disputed Domain Names in bad faith.
The Respondent selected the Disputed Domain Name to intentionally confuse unsuspecting Internet users into visiting its website as a way of redirecting Internet users searching for the Complainant to the Disputed Domain Name’s website which is unrelated to the Complainant and its services. This bait-and-switch tactic is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
It is more likely than not that the Respondent knew of and targeted the Trade Mark, and the Respondent should be found to have registered and used the Disputed Domain Names in bad faith.
The Respondent makes the following submissions.
Identical or confusingly similar
The Respondent does not dispute that the Disputed Domain Name is similar to the Trade Mark. Any similarity is unintentional and the terms that comprise the Disputed Domain Name have a wholly different meaning in the context of the Respondent’s intended use.
No rights or legitimate interests
The Respondent chose the Disputed Domain Name because it is an acronym for the Personalized Evaluation & Treatment (PET) solutions for Personalized Lifestyle, Activity & Nutrition (PLAN). A DNA plan is a type of plan based on genetic testing that is used to determine a personalized health and wellness diet or regimen.
The Respondent registered the Disputed Domain Name for its common generic and descriptive significance and its meaning in relation to his personalized evaluation and treatment. The Respondent has been migrating NutriBiologic products and services to other domains and websites that have a similar purpose as the one intended for the Disputed Domain Name. This further substantiates the Respondent’s demonstratable preparations to use the Disputed Domain Name for a legitimate purpose.
The Respondent had never heard of the Complainant or the Trade Mark at the time of registration. The Respondent has no intention of using the Disputed Domain Name to sell insurance for animals.
The Policy was not intended to bar others from using common terms in a domain name except where the use is to capitalise on the goodwill of the trade mark owner. The Complainant has not put forward any evidence of this.
The Respondent registered the Additional Disputed Domain Name for the same reason he registered the Disputed Domain Name and to cover plural usage in order to further protect his intellectual property rights. In October, the Respondent is scheduled to give a lecture on human genetics and nutrition and intends to include the public usage of “dna”, “pet”, and “plan” as part of the lecture.
Registered and used in bad faith
The Panel is not required to consider this element as the Complainant has failed to satisfy the second element.
The Respondent did not register the Disputed Domain Name to sell it to the Complainant and has never offered to sell the Disputed Domain Name to any party. The Respondent had never heard of the Complainant or the Trade Mark at the time of registration.
The Complainant has not provided evidence that the Respondent competes with or intends to compete with the Complainant and the Panel should give little or no weight to the Complainant’s unsworn factual assertions.
Redirecting a dictionary word domain name registered for its descriptive meaning and intended use as an acronym to a website consistent with that meaning is not bad faith. Dictionary words may be used for unrelated purposes by different parties to sell unrelated goods and services. The Respondent has plans to develop his own goodwill with the Disputed Domain Name and advance his own business interests.
The Respondent’s registration of the Additional Disputed Domain Name was not targeted at the Complainant. The Respondent registered the Disputed Domain Names to further his NutriBiologic business interests in the fields of health, wellness and nutrition and protect his intellectual property rights. The Respondent’s intended use of the Additional Disputed Domain Name is the same as the Disputed Domain Name and both are legitimate, good faith, non-competitive uses.
The Respondent has registered several other “dna” + “pet” + “plan” formative domain names to protect his intellectual property. Each of these registrations serves to strengthen the Respondent’s defence.
Reverse Domain Name Hijacking
As a large sophisticated entity, the Complainant should have known better than to file the Complaint. Information concerning the Respondent and the phrase “DNA Plans” (which is the predominant component of the Disputed Domain Name) is readily available. The Complainant’s primary objective is to own all PET PLAN-formative domain names. The Complainant believes it owns a monopoly in the phrase. The Complainant has no basis to conclude the Respondent was targeting pets or the Trade Mark. The Complainant could have inferred that the Respondent had a legitimate purpose for registering the Disputed Domain Name based on the website. There is nothing improper in redirecting the Disputed Domain Name to the Respondent’s existing website.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant.
A.1 Supplemental Filing
The Complainant submitted a Supplemental Filing on July 25, 2019, and the Respondent filed a reply objecting to the Complainant’s Supplemental Filing on July 26, 2019.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged.
A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel has reviewed the Complainant’s Supplemental Filing and decided to admit it in this instance, principally because the matters raised relate to:
- the Respondent’s explanation of the acronyms used in the Disputed Domain Names; and
- the fact that the Respondent registered the Additional Disputed Domain Name 3 days after this Complaint commenced,
which the Panel considers could not have been reasonably anticipated by the Complainant at the time of filing the Complaint.
To the extent the Respondent’s objection to the Complainant’s Supplemental Filing contains statements amounting to a Supplemental Filing, in the interests of justice and due process, these statements will also be allowed.
A.2 Request to Add Additional Domain Name to the Proceeding
The Complainant has requested that the Additional Disputed Domain Name be added to the Complaint.
It is up to the Panel to determine whether or not to accept requests to add domain names to the Complaint after the Respondent has been notified and the proceedings have formally commenced (see section 4.12.2 of WIPO Overview 3.0).
Previous UDRP panels have been reluctant to accept such requests unless there is clear evidence of the respondent gaming or attempts to frustrate the proceedings.
The Panel considers that this is a case where it is appropriate to add the Additional Disputed Domain Name to the Complaint for the following reasons:
- the Respondent registered the Additional Disputed Domain Name 3 days after this proceeding commenced. This is evidence of the Respondent attempting to frustrate the proceedings (see section 4.12.2 of WIPO Overview 3.0);
- the Complainant and the Respondent are the same with respect to both domain names and both domain names are identical except for the addition of the letter “s” in the Additional Disputed Domain Name;
- is expedient to hear and determine them together in order to avoid the potentially varying decisions resulting from separate proceedings and to incur supplemental unnecessary costs for the Complainant; and
- any potential unfairness to the Respondent in granting the Complainant’s request has been remedied by the response provided by the Respondent following the Administrative Panel Decision Order No.1 which addresses the Respondent’s registration of the Additional Disputed Domain Name.
(see De Beers Intangibles Limited v. Romano Mudano, WIPO Case No. D2017-0323).
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
The Disputed Domain Names incorporate the Trade Mark in its entirety, plus the additional word “dna” and, in the Additional Disputed Domain Name, the letter “s”. Where a domain name incorporates the entirety of a trade mark, it will normally be considered confusingly similar to the mark (see section 1.7 of WIPO Overview 3.0). The additional words do not prevent the Panel from making a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0).
The Panel considers that the Disputed Domain Names are confusingly similar to the Trade Mark and therefore the Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Names.
- There is no evidence that the Respondent or his company has been commonly known by the Disputed Domain Names, or has registered or common law trade mark rights in relation to this name.
- As discussed below and in relation to the third element of the Policy, the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Name redirects to a website that appears to be for commercial gain. There is no active website at the Additional Disputed Domain Name. This is not supportive of a claim to rights or legitimate interests (see section 2.5.3 of WIPO Overview 3.0).
The Respondent argues that he chose the Disputed Domain Names because “pet plan” is an acronym for Personalized Evaluation & Treatment (PET) solutions for a Personalized Lifestyle, Activity & Nutrition (PLAN). The Panel acknowledges that holding domain names consisting of acronyms, dictionary words, or common phrases can be bona fide and not per se illegitimate under the UDRP (see section 2.1 of WIPO Overview 3.0). However, the Panel finds the acronyms proffered by the Respondent to be implausible, uncommon, and not credible. The Panel’s Internet searches of these terms reveal they are not commonly used and as discussed below, the Respondent’s evidence on this issue is not compelling.
Even if the Panel were to accept that the Respondent registered the Disputed Domain Names because of their correspondence to particular acronyms or dictionary meanings, this does not by itself automatically confer rights or legitimate interests on the Respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights.
Similarly, in order to find rights or legitimate interests in Disputed Domain Names comprising of an acronym, the Respondent is required to provide evidence supporting its explanation for its registration and use of the Disputed Domain Names which should indicate a credible and legitimate intent which does not capitalise on the reputation and goodwill inherent in the Trade Mark (see section 2.10 of WIPO Overview 3.0).
The Panel accepts the Complainant’s submission that none of the terms “dna”, “pet” or “plan” taken separately or combined are relevant to the content of the website found at the Disputed Domain Names. The Respondent relies primarily on his apparent preparations to use the Disputed Domain Names for providing DNA “Personalized Evaluation & Treatment” (PET) solutions for a “Personalized Lifestyle, Activity & Nutrition” (PLANS).
The Respondent had the opportunity to provide such evidence of preparations to use the Disputed Domain Names in connection with this acronym, but did not do so beyond the statements in the Respondent’s Affidavit and Supplemental Declaration. The Respondent has not provided any evidence of business plans or documents that reference any “dna pet plan”. The Respondent’s statement in the Supplemental Declaration that he intends to give a lecture on human genetics and nutrition and intends to include the public usage of “dna”, “pet”, and “plan” as part of this lecture is not sufficient.
The Panel acknowledges that a relatively short period of time has elapsed from when the Disputed Domain Names were registered and that business plans and operations can take time to develop. However, if not independently verifiable by the panel, preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence (see section 2.2 of WIPO Overview 3.0). The Respondent has not provided any documentary evidence to substantiate these assertions beyond a testimonial that the Respondent claims demonstrates his interest in exploring genetic risk factors.
Notwithstanding the Respondent’s submissions to the contrary, the Panel considers that the Respondent’s assertions of this intention, even in the form of an Affidavit, are not sufficient (see AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485).
As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant’s brand is well known internationally, having been used by the Complainant in connection with pet insurance for several decades across various jurisdictions. The Complainant also owns two registered domain names incorporating the Trade Mark and has won numerous awards. The Complainant has developed a significant reputation in the Trade Mark and it is widely known. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Names by almost 30 years. Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview).
Here, the Panel can reasonably infer that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Trade Mark. In light of the Complainant’s reputation and significant Internet presence, the Panel finds the Respondent’s assertions that he had never heard of the Complainant or the Trade Mark at the time of registration to not be credible. For the reasons identified in relation to the second element above, the Panel also finds that the Respondent, while by all appearances operating an actual business, has not provided a credible explanation for the Respondent’s choice of the Disputed Domain Names for such purposes.
The following additional factors also support a finding of bad faith registration and use:
- The Respondent has registered over 4,000 domain names. Previous UDRP panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names (see section 3.2.3 of WIPO Overview 3.0). Had the Respondent conducted good faith efforts to screen its registration, it would have at least become aware of the Complainant’s trade mark registration in the United States. Although the Respondent denies that he is a domain name speculator, the Panel notes that this concept has been applied irrespective of whether the registrant considers themselves to be a professional domainer as such (see section 3.2.3 of WIPO Overview 3.0).
- The Respondent registered the Additional Disputed Domain Name incorporating the Trade Mark subsequent to being put on notice of its potentially abusive activity (see section 3.1.1 of WIPO Overview 3.0).
- The Respondent lacks legitimate rights and interests (for the reasons identified above).
- The Respondent is using the Disputed Domain Name to redirect Internet users to “www.nutribiologic.com”. None of the terms in the Disputed Domain Name taken separately or combined are relevant to the content of the website found at “www.nutribiologic.com” or the Respondent’s business. There is no active website at the Additional Disputed Domain Name.
The Panel considers that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trade Mark.
The Additional Disputed Domain Name resolves to a parking page. Non-use does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:
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.
The Panel considers that the overall circumstances of this case (which are discussed above) suggest that the Respondent’s non-use of the Additional Disputed Domain Name follows that of the first Disputed Domain Name and is in bad faith.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <dnapetplan.com> and <dnapetplans.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: September 18, 2019