WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Donna Ware

Case No. D2020-2464

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Donna Ware, United States of America (“United States” or “US”).

2. The Domain Names and Registrar

The disputed domain names <petplanprogram.com> and <petplanprograms.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2020 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 29, 2020.

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 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2020.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on November 16, 2020. 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 states that it provides a wide range of pet insurance products for domestic and exotic pets in the United Kingdom and around the world through various licensees. In addition, it offers insurance to pet care professionals and a pet finding service. The Complainant states that it was founded in 1976 in the United Kingdom and is now a subsidiary of Allianz Insurance plc.

The Complainant is the owner of numerous trade mark registrations for its brand PET PLAN, including but not limited to the following trade marks:

These are collectively referred to as the “PET PLAN Mark”.

The Respondent registered the disputed domain names <petplanprogram.com> and <petplanprograms.com> on June 17, 2011.

The Respondent is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the PET PLAN Mark. The Complainant contends that the disputed domain names are confusingly similar to its PET PLAN Mark because the Respondent has simply added the descriptive term “program”, in both singular and plural form, to the Complainant’s PET PLAN Mark. The Complainant further contends that the term “program” is closely linked and associated with the Complainant’s PETPLAN Affiliate Program.

The Complainant further states that it has continually operated under the Pet Plan name and has used the PET PLAN Mark in connection with its pet insurance products for over 40 years. It also provides a PETPLAN Affiliate Program to businesses who wish to be affiliated to the PET PLAN brand. It therefore states that the PET PLAN Mark is a distinctive and well-known mark that is respected worldwide and in the insurance industry. In this respect, the Complainant states that it has won numerous awards (evidence of which is provided at Annex 6.3 of the Complaint), has featured in the “Global Pet Insurance Market Growth Analysis, Forecasts to 2025” and regularly appears on websites comparing the best insurance policies (evidence of which is provided at Annex 6.4 of the Complaint).

The Complainant also states that it has a strong internet presence through its websites as well as its various social media platforms including Facebook and Twitter. The Complainant’s websites include “www.petplan.co.uk”, which the Complainant states is ranked at 346,412 worldwide, and “www.gopetplan.com”, which is owned and operated by the Complainant’s licensee Fetch Insurance Services, LLC in the US.

The Complainant also asserts that the Respondent has no rights in the disputed domain names. In this respect, the Complainant states that the Respondent is not affiliated or connected with it in any way and is not licensed by it or otherwise authorized to use the PET PLAN name and Mark.

The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain names. The Complainant states that the Respondent is not commonly known by the disputed domain names. The Complainant contends that the Respondent’s use of the disputed domain names is to create an impression of association with the Complainant in order to earn revenue through the different third-party links provided on the websites to which the disputed domain names resolve. The Complainant also states that it sent a cease and desist letter to the Respondent seeking to resolve the dispute outside of these administrative proceedings but that the Respondent never responded to this communication.

Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith and that this is evidenced by the fact that (a) the disputed domain names resolve to websites displaying links to third-party websites, presumably for pecuniary gain; and (b) as at the date of the Complaint, the Respondent was offering to sell the disputed domain name <petplanprogram.com>. The Complainant also contends that the Respondent’s action in registering the disputed domain names at a time significantly after the Complainant and its PET PLAN Mark had become famous and well-respected worldwide further demonstrates that the Respondent registered the disputed domain names in bad faith. Given the strong reputation the Complainant holds in its PET PLAN Mark, the Complainant states that the Respondent knew, or at least should have known, of the existence of the Complainant’s PET PLAN Mark at the time of registering the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Issue: Laches

The Panel notes that the disputed domain names were registered on June 17, 2011 and that the Complaint was filed on September 23, 2020. The question, which arises is whether the lapse of around nine years and three months from the disputed domain names’ registration date prevents the Complainant from commencing an administrative proceeding against the Respondent under the Policy.

The Panel recognizes that the issue has been addressed in previous URDP decisions and that the doctrine or policy of laches or estoppel has not been applied to proceedings under the URDP. See section 4.17 of the WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. Here, the Panel does not draw any negative inference from the mere delay in the filing of the Complaint. In this respect, the Panel is entitled to have regard to the lack of any substantive response by the Respondent to the Complainant’s contentions. The Panel is also entitled to have regard to the fact that in the nine years the Respondent has held the disputed domain names in its ownership, and there is no evidence that it has made any use of the websites to which the disputed domain names resolve, other than to display pay-per-click links.

B. Substantive Issues

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:

(i) that the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

C. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the PET PLAN Mark in the United States, Canada, the United Kingdom, and the European Union. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the PET PLAN Mark. The Panel is satisfied that the Complainant is well-known by its PET PLAN Mark as a provider of various pet insurance products for domestic and exotic pets.

The Panel finds that the disputed domain names contain, as a dominant element, the PET PLAN Mark combined with the term “program” in singular or plural forms. The Panel considers the term “program” to be a descriptive term that directly relates to the PETPLAN Affiliate Program services provided by the Complainant. In any event, the use of a generic and descriptive term such as “program” does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0).

The Panel also notes that it is well-established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparisons under the first element.

The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s PET PLAN Mark.

Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainant.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any one of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.

The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain names. In this respect, the Panel accepts that the Respondent is not commonly known by the disputed domain names and has not been licensed, authorized, or permitted by the Complainant to use or to register domain names incorporating the Complainant’s PET PLAN Mark. The Complainant has (prior) rights in the PET PLAN Mark, which significantly pre-date the Respondent’s registration of the disputed domain names.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent has failed to show that it has acquired any rights with respect to the disputed domain names or that the disputed domain names are used in connection with bona fide offerings of goods and services. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s Complaint.

Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

E. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain names have been registered in bad faith for the following reasons:

(i) The disputed domain names were registered on June 17, 2011, some 14 years after the Complainant first registered its PET PLAN Mark in the United Kingdom in 1997.

(ii) The Panel is satisfied that the Complainant’s PET PLAN Mark is well-known and respected in its industry with a history of use going back over 40 years. The Panel is also satisfied that at the time of registering the disputed domain names, the Respondent was aware of the Complainant, its PET PLAN Mark, the Complainant’s exclusive rights in that Mark and the goodwill residing in that Mark. This is evidenced by the fact that the disputed domain names use the PET PLAN Mark in its entirety with the only difference being in the adoption of the generic and descriptive term “program” (in singular and plural form).

(iii) Paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights”. Even a most cursory trade mark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain names would have instantly revealed the Complainant and its PET PLAN Mark. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondent’s use of the PET PLAN Mark and third-party links to pet care and pet related products supports a finding that the Respondent knew of the Complainant, the Complainant’s PET PLAN Mark and the Complainant’s services as at the date of registration of the disputed domain names.

(iv) The Complainant has provided as evidence, screenshots of websites to which the disputed domain names resolve (Annex 3 of the Complaint). These show that the disputed domain names resolve to websites featuring links to third-party websites, many of which relate to pet care and pet related products and services. The Complainant has also provided as Annex 9 of the Complaint evidence that the disputed domain name <petplanprogram.com> is for sale for USD 7,999, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name. The Panel therefore concludes that the Respondent likely registered the disputed domain names to capitalize on the reputation and goodwill of the Complainant’s PET PLAN Mark by creating a likelihood of confusion with the Complainant’s PET PLAN Mark to attract customers for its own financial gain.

The Panel is also satisfied that the disputed domain names have been used in bad faith for the following reasons:

(i) The Panel accepts that use of the disputed domain names to redirect Internet users to websites featuring links to third party websites is likely providing the Respondent with pay-per-click revenue from the linked websites. Section 2.9 of WIPO Overview 3.0 notes that UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.

The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. The Panel therefore concludes that the Respondent, by using the disputed domain names in this way, has intentionally attempted to attract for commercial gain, Internet users to the websites to which the disputed domain names resolve, by creating a likelihood of confusion with the Complainant’s PET PLAN Mark as to source, sponsorship, affiliation, or endorsement of the websites or of a product or service appearing on the websites. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

(ii) The Panel also accepts that the Respondent’s offer to sell the disputed domain name <petplanprogram.com> for an amount far in excess of its out-of-pocket expenses in registering the disputed domain name demonstrates bad faith.

(iii) The Respondent’s failure to reply to the cease and desist letter sent by the Complainant is further evidence of bad faith, given all the circumstances of the case. See LEGO Juris A/S v Thai Dang, WIPO Case No. D2018-1929.

Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

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 <petplanprogram.com> and <petplanprograms.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: November 30, 2020