The Complainant is Pet Plan Ltd., United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain name <mygopetplan.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, 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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.
The Center appointed Geert Glas as the sole panelist in this matter on September 14, 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.
The Complainant, Pet Plan Ltd., is a subsidiary of Allianz Insurance plc, part of the Allianz Global Group, and is a global leader offering insurance policies for dogs, cats, rabbits, horses, reptiles, birds, and small mammals, as well as insurance to pet care professionals and a pet finding service. The Complainant was founded in the UK in 1977 but nowadays has offices throughout Europe, Australia, New Zealand, and the Americas. Over the years, the Complainant has won several awards, including the Most Trusted Pet Insurance Provider Award.
The Complainant holds a wide range of verbal and figurative trademark registrations that consist of the words “pet plan” in among others the UK, European Union (“EU”), Australia, Canada, and the United States of America (“US”), including the following:
- UK trademark PETPLAN, registration number UK00002052294, registered on January 17, 1997, in International class 36;
- UK trademark PETPLAN, registration number UK00002222270, registered on April 6, 2001, in International classes 6, 16, 25, 35, 36, 41, 42, and 45;
- EU trademark PETPLAN, registration number 000328492, registered on October 16, 2000, in International class 36;
- EU trademark PETPLAN, registration number 001511054, registered on December 18, 2001, in International classes 16, 25, 26, 35, 36, 41, and 42;
- Australian trademark PETPLAN, registration number 918123, registered on June 28, 2002, in International classes 16, 35, 36, and 41;
- Canadian trademark PET PLAN, registration number 1070825, registered on October 17, 2003, in International classes 16, 25, 26, 35, 36, 38, 40, 41, 42, and 44; and
- US trademark PET PLAN, registration number 3161569, registered on October 24, 2006, in International classes 16, 36, and 41.
The Complainant also owns a number of domain names, including <gopetplan.com>, registered on October 1, 2004, <petplan.com>, registered on March 10, 1996, and <petplan.co.uk>, registered on August 1, 1996.
The disputed domain name was registered on February 1, 2021.
Before commencing the present procedure, the Complainant sent three cease and desist letters, on March 29, 2021, April 8, 2021, and April 19, 2021 respectively, to the Respondent asking for the voluntarily transfer of the disputed domain name to the Complainant. According to the Complainant, these letters remained unanswered by the Respondent.
The Complainant provides evidence that the disputed domain name has been used (i) to resolve to a parked aggregator website featuring pay-per-click (“PPC”) third-party advertising links, some of which directly compete with the Complainant's business, and (ii) to redirect Internet users to a variety of third-party websites, including the Complainant’s own website found at “www.gopetplan.com”. Additionally, the Complainant provides evidence that the disputed domain name is being offered for sale at the time of filing the Complaint for USD 899 by a seller located at the Cayman Islands.
The following is a summary of the Complainant’s contentions.
The Complainant requests that the disputed domain name be transferred to it on the following grounds:
(i) The Complainant contends that the disputed domain name is confusingly similar to its trademarks.
The Complainant contends that the disputed domain name is confusingly similar to its PET PLAN trademark portfolio, capturing the PET PLAN trademarks in its entirety and simply adding the generic terms “my” and “go”. According to the Complainant, these generic terms do not negate the confusing similarity between the disputed domain name and the trademarks. On the contrary, the addition of “go” only enhances the likelihood of confusion, seeing that this term is also used by the Complainant itself for its website “www.gopetplan.com”.
The Complainant also contends that the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name should be disregarded, as this is a standard registration requirement.
(ii) The Complainant contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent is not affiliated to the Complainant, nor sponsored, authorized, licensed, or otherwise permitted to use the Complainant’s trademarks. Furthermore, the Complainant states that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name. This is also due to the fact that, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service. The Complainant holds that using such service equates to a lack of legitimate interest.
Additionally, the Complainant contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services nor a legitimate noncommercial or fair use. According to the Complainant, the Respondent is simply trying to profit off the fame of the Complainant’s trademarks, given that the disputed domain name redirects Internet users directly to a variety of third-party websites, including the Complainant’s own website found at “www.gopetplan.com”, as well as to a parked aggregator website featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the aggregator website features a third-party link for “pet health insurance for dogs”. The Complainant provides evidence in this regard indicating that each time a user types in the URL, a different website is displayed. The Complainant presumes that the Respondent receives PPC fees from the linked websites that are listed at the website to which the disputed domain name resolves. At the time of filing, the disputed domain name is being offered for sale for USD 899, which according to the Complainant serves as further evidence of the Respondent’s lack of rights and legitimate interests.
(iii) The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant contends that the fact that the Respondent registered the disputed domain name on February 1, 2021, which is significantly after the official trademark registrations of the Complainant starting in 1997 demonstrates that the Respondent registered the domain in bad faith. Furthermore, according to the Complainant, the Respondent knew, or at least should have known of the Complainant’s trademarks, seeing that the Complainant has been in business on a global scale for over 40 years, has received numerous awards for its services and has an extensive Internet search engine and social media presence.
In addition, the Complainant argues that the Respondent is using the disputed domain name with nefarious intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s brand, caused by diverting Internet users to a PPC aggregator website that redirects to a number of websites, including those of competitors as well as the Complainant’s own website found on “www.gopetplan.com”. This likelihood of confusion also misleads Internet users as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and disrupts the Complainant’s business.
Furthermore, the Respondent is currently offering to sell the disputed domain name. The Complainant contends that such actions constitute bad faith because the Respondent has demonstrated an intent to sell the disputed domain name for valuable consideration in excess of his out-of-pocket expenses, thereby seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark.
The Complainant also cites previous UDRP panel decisions to argue that employing a privacy service to hide one’s identity, serves as further evidence of bad faith registration and use.
Lastly, the Complainant contends that the Respondent’s bad faith is further evidenced by the fact that the Respondent did not reply to the numerous cease and desist letters sent prior to commencing the proceedings.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
The Complainant has demonstrated that it owns numerous trademarks consisting of the words “pet plan” throughout the world, and that it has invested considerably in the widespread use, advertising and promoting of these trademarks. The Complainant’s rights in these trademarks predate the Respondent’s registration of the disputed domain name by almost 25 years.
Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (See e.g. Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203 (<buyvogue.com>); and Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287, (<allianzkenya.com>)).
In this case, this Panel finds that the Complainant’s PET PLAN trademarks are readily recognizable within the disputed domain name. This Panel is therefore of the opinion that the addition of the terms “my” and “go” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.
Furthermore, section 1.11.1 of WIPO Overview 3.0 states that a Top-Level Domain (“gTLD”) in a domain name, such as “.com”, is viewed as a standard registration requirement and as such has to be disregarded in this assessment.
Consequently, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademarks in which it has demonstrable rights and in doing so has satisfied the first element under paragraph 4(a) of the Policy.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once a complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. Accor v. Eren Atesmen, WIPO Case No. D2009-0701; Belupo d.d. V. WACHEM d.o.o., WIPO Case No. D2004-0110; OSRAM GmbH. v. Mohammed Rafi/Domain Admin v. Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; and section 2.1 of WIPO Overview 3.0).
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must demonstrate that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides that a respondent may have rights or legitimate interests in the following non-exhaustive circumstances:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to section 2.5.1 of WIPO Overview 3.0, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” (See e.g. Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW International Union, WIPO Case No. D2013-1304, (<reallywalmart.com>); and Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698, (<buycomfortis.com>)). The Complainant has confirmed in this regard that it does not have any connection or affiliation to the Respondent and that it has never licensed, sponsored or otherwise authorised the use of its trademarks to the Respondent.
This Panel also finds that the disputed domain name is not used for a legitimate noncommercial or fair use. The Complainant has provided evidence that the disputed domain name has been used to resolve to a parked aggregator website with PPC links, including links to websites of competitors, as well as to redirect directly to a variety of third-party websites, including one of the Complainant’s main websites. Section 2.5.3 of WIPO Overview 3.0 states in this regard that “a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests”.
Furthermore, section 2.9 of WIPO Overview 3.0, provides that “parked page[s] comprising PPC links [do] 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”. This principle has been confirmed by several UDRP panel decisions, including in Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO Case No. D2019-3064, where the panel held that “operating PPC parking pages using a distinctive trademark or its intentionally misspelled version in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services”.
Noting also that the Respondent did not reply to the Complainant’s contentions and did not offer any explanation for its registration and use of the disputed domain name despite repeated cease and desist letters, this Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, as described above, which has not been rebutted by the Respondent.
Accordingly, this Panel is satisfied that the Complainant has proven the second element under paragraph 4(a) of the Policy.
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following non-exhaustive circumstances constitute evidence of a respondent’s bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
First, with respect to registration, section 3.1.4 of WIPO Overview 3.0 states that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see e.g., Caesars World, Inc. v. Forum LLC, WIPO Case No. D20025-0517; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Here, this Panel is of the opinion that the disputed domain name was indeed registered in bad faith. This Panel observes that the Respondent registered the disputed domain name almost 25 years after the Complainant registered its first PET PLAN trademark. In line with previous UDRP decisions (see e.g. Pet Plan Ltd v. On behalf of pet-plan-claim-form.com owner, Whois Privacy Service / Vadim Yasinovsky, PDFfiller inc., WIPO Case No. D2018-1943; and Pet Plan Ltd v. Joseph Zambito, WIPO Case No. D2020-1205), this Panel finds that the Complainant’s trademarks and business have acquired a worldwide reputation and are widely recognized, including in the pet insurance industry. Furthermore, this Panel observes that the majority of results featured on the first page of Google search results when searching for “my go petplan” are linked to the Complainant (section 3.2.2 WIPO Overview 3.0). The fact that the Respondent chose to register the disputed domain name combined with “go”, which is already used separately in the Complainant’s website “www.gopetplan.com”, leads this Panel to conclude that the Respondent cannot reasonably claim to have registered the disputed domain name without having been aware of the Complainant’s PET PLAN trademarks.
In light of the above, this Panel finds that the Respondent registered the disputed domain in bad faith.
Second, as to the use the Respondent is making of the disputed domain name, one of these uses consists of redirecting Internet users to the Complainant’s website at “www.gopetplan.com”. According to section 3.1.4 of WIPO Overview 3.0, “redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”. This Panel is of the opinion that this is the case in this matter. The Complainant itself holds multiple domain names that redirect to its main websites “www.gopetplan.com” and “www.petplan.co.uk”. Therefore, the conduct of the Respondent gives the impression to Internet users that the disputed domain name is associated with the Complainant and, as such, creates a risk of confusion (see MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231; and PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888).
In addition, this Panel accepts the evidence provided by the Complainant that use of the disputed domain name to resolve to a parked aggregator website featuring redirect links to third party websites, some of which appear to distribute malware or undesirable applications, is likely providing the Respondent with PPC 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 PPC 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 (see e.g., Carvana, LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2020-1533; LogMeIn, Inc. v. Nanci Nette, WIPO Case No. D2019-0007; and Ruby Life Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1456).
Moreover, the Panel observes the presence of the following additional factors that support the finding of bad faith in the use of the disputed domain name in this case:
(i) the lack of response to the repeated cease and desist letters sent by the Complainant as well as this Complaint is further evidence of bad faith, given all the circumstances of the case (see e.g., Pet Plan Ltd v. Donna Ware, WIPO Case No. D2020-2464, and CCA and B, LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1531);
(ii) this Panel also accepts that the offer to sell the disputed domain name for an amount far in excess of out-of-pocket expenses demonstrates bad faith, also taking into account the lack of legitimate interests in the disputed domain name (section 3.1.1 WIPO Overview 3.0); and
(iii) the Respondent is concealing its identity in the registration of the disputed domain name through a privacy service and Fundacion Privacy Services LTD in particular (section 3.6 WIPO Overview 3.0; Pet Plan Ltd v. On behalf of pet-plan-claim-form.com owner, Whois Privacy Service / Vadim Yasinovsky, PDFfiller inc., WIPO Case No. D2018-1943; Pet Plan Ltd v. Contact Privacy Inc. Customer 1243975004 / Contact Privacy Inc. Customer 1243980331 / Paul Richmond, 808Paul LLC, WIPO Case No. D2019-0949; and Pet Plan Ltd v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-2466). In Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1514, the panel stated with respect to Fundacion Privacy Services LTD that “the Respondent has chosen to use a particular register and a particular privacy service that now has an extensive history of refusing to disclose the details of the underlying registrant and where in nearly all such cases the complainant succeeded. As the Panel has already recorded in the context of the Registrar’s conduct, that history strongly suggests that the Registrar together with Fundacion Privacy Services LTD, has adopted a business model of providing registrar and privacy services either to a single or multiple cybersquat[t]ers. If that is so, the use of this particular service arguably now carries with it a presumption of bad faith registration and use”.
Consequently, this Panel finds that the Respondent has been using the disputed domain name in bad faith.
In conclusion, this Panel determines that, for all of the above reasons, the disputed domain name was registered and used in bad faith. Accordingly, the Complainant has satisfied the third element under paragraph 4(a) 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 name, <mygopetplan.com>, be transferred to the Complainant.
Geert Glas
Sole Panelist
Date: September 28, 2021