WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petplan Ltd. v. Taeyeon Kim

Case No. D2021-3666

1. The Parties

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

The Respondent is Taeyeon Kim, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <petplan20.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 sent an email communication in English and Korean to the parties on December 9, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Korean. The Complainant sent an email to the Center requesting English to be the language of the proceeding on December 10, 2021. The Respondent did not comment on the language of the proceeding.

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 December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent sent an email communication to the Center on December 28, 2021, but did not submit any formal response. The Center notified the parties that it will proceed to panel appointment on January 14, 2022.

The Center appointed Andrew J. Park as the sole panelist in this matter on January 21, 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 Background

The Complainant, Petplan Ltd. (“Petplan”) is a pet insurance company based in the United Kingdom. It provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees. The Complainant also offers insurance policies to pet care professionals and pet finding services, and anyone in the business of pet care. The Complainant was founded in 1976 and is now a subsidiary of Allianz Insurance plc, one of the largest general insurers in the United Kingdom and part of the Allianz Global Group which is also one of the world’s foremost financial services providers. “Petplan” is a distinctive and well-known mark used by the Complainant in connection with pet insurance for over 40 years.

The Complainant is the owner of trademark registrations across various jurisdictions, including the following:

The Complainant has a strong Internet presence through its websites as well as its various social media platforms including Facebook and Twitter. The Complainant’s official domain is <petplan.co.uk> and it is seemingly well recognized worldwide in the pet industry. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English.

The Respondent operates a website to which the disputed domain name resolves and introduces a mobile app, “PLAN20”, that informs and manages the health status of animals (mainly dogs and cats), including weight management. The Respondent allows consumers to purchase “PLAN20” directly through Google Play and Apple App Store links which are included in the website. The Respondent explained in its website that it named this app “PLAN20” because it provides a health management plan to help pets live up to the age of 20.

On December 28, 2021, the Respondent sent an email to the Center requesting that the Complaint be sent again, but no response was submitted.

The disputed domain name <petplan20.com> was registered on September 10, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons.

(a) The disputed domain name is identical or confusingly similar to the Complainant’s trademark PETPLAN in which the Complainant has rights. The Complainant’s ownership of the trademark, PETPLAN and the Complainant’s exclusive right to use the PETPLAN trademark in commerce on or in connection with the goods or services are prima facie evidence of the validity of the term PETPLAN as a trademark through its registration with UKIPO, EUIPO, IP Australia, CIPO and USPTO. The disputed domain name incorporates the Complainant’s trademark PETPLAN in its entirety, rendering it confusingly similar to the Complainant’s trademark. The applicable Top-Level Domain (“TLD”) “.com” in the disputed domain name can be viewed as a standard registration requirement and therefore, should be disregarded for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. Also, the mere adding of the numerical term “20” to the end of the PETPLAN trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. The addition of such terms is not sufficient to prevent a finding of confusing similarity under the first element.

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain name incorporating the Complainant’s trademark. The Respondent, Taeyeon Kim, is not commonly known by the disputed domain name or the name of the website, “PLAN20”, which evinces a lack of rights or legitimate interests. Further, the Complainant claims that the Respondent has registered the disputed domain name to use it for its website and give the false impression to Internet users that there is an official sponsorship or endorsement between the Respondent and the Complainant.

(c) The disputed domain name was registered and is being used in bad faith. First, the Complainant claims that the Respondent registered the disputed domain name in bad faith. The Respondent must have been well-acquainted with the Complainant’s trademark when it registered the disputed domain name because the Complainant started its business in 1976, which predates – by almost 40 years – the registration date of the disputed domain name and further, the Complainant has been an international company with trademark registrations across numerous countries. As a pioneer in its field, the Complainant has numerous awards to its credit, including World Branding Awards which must have motivated the Respondent to register the disputed domain name for its business. The disputed domain name incorporates the Complainant’s trademark PETPLAN, and not “PLAN20”, the Respondent’s own company name, in its entirety. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business and its intention to take advantage of the Complainant’s worldwide reputation and presence on the Internet.

Second, the Complainant claims that the Respondent has used the disputed domain name in bad faith.

The Respondent is operating a website to which the disputed domain name resolves and sells products related to pet welfare, a field in which the Complainant carries a reputation. The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith use.

Moreover, the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of these administrative proceedings which can be considered as a factor in finding bad faith registration and use of the disputed domain name. Finally, the Complainant insists that the Respondent knew of and targeted the Complainant’s trademark intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement which constitutes bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Panel is proficient in both English and Korean, capable of reviewing all documents and materials in both languages and giving full consideration to the Parties’ respective arguments;

3) The disputed domain name comprises English terms; and,

4) The website at the disputed domain name is presented in English.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in both English and Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the trademark PETPLAN and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, adding the numeric term “20”. Such addition does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8, where 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. And the use of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate non-commercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent registered the disputed domain name and created a website using the disputed domain name to offer a mobile app, “PLAN20”, which is apparently a software program that can be downloaded and installed onto a user’s mobile device. This app apparently informs and manages the health status of animals (mainly dogs and cats), including weight management. The Respondent apparently permits online consumers to purchase “PLAN20” directly through Google Play and Apple App Store links which are included in the website. The Respondent explained in its website that it named this app and its company name, “PLAN20”, since the app provides a health management plan to help pets live up to the age of 20.

The Respondent not only used the Complainant’s PETPLAN trademark in the disputed domain name but also conducted a business related to pets, which belongs tothe Complainant’s business sector. Further, the Respondent selected and used the Complainant’s trademark PETPLAN in the disputed domain name, demonstrating its intention to take advantage of the Complainant’s reputation in the pet industry to obtain commercial gain in selling its PLAN20 app to Internet consumers. Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Further, the Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant.

Most tellingly, in registering the disputed domain name, the Respondent chose “petplan” (plus “20”) instead of “plan20” which signals a clear intention to play off of the Complainant’s mark.

Thus, the Panel’s view is that these facts may be taken as true in the circumstances of this case, and the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, particularly noting that the Respondent has not filed a formal Response.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Complainant claims that the Respondent registered a domain name that is confusingly similar to the Complainant’s trademark PETPLAN, with knowledge of the Complainant and its famous business.

As already mentioned, the Respondent did not file any formal Response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds the Respondent intentionally registered the disputed domain name – which is confusingly similar to the Complainant’s trademarks – in bad faith for several reasons. In particular, the Complainant’s commencement of its business in 1976 and its first registration of the PETPLAN trademark since 1996 far pre-date the registration date of the disputed domain name in 2020. The Complainant has been in this pet insurance business for over 40 years, and it owns numerous worldwide trademark registrations. As a pioneer in the pet industry, the Complainant has received many awards and the Panel also notes that the Complainant has a strong Internet presence not only through its official website but also via various other social media platforms including Facebook, Twitter, and Instagram, all of which demonstrate that the Respondent must have had knowledge of the Complainant and its business when it registered the disputed domain name.

The fact that (i) the Complainant had never given any authorization to the Respondent to use its trademark, (ii) the Respondent registered a domain name which contains the Complainant’s trademark in its entirety, (iii) the Respondent operates a website in which the disputed domain name resolves to a purported offering of a mobile app which informs and manages the health status of animals, which is directly related to the Complainant’s business, (iv) the Respondent included the Complainant’s trademark in its entirety within the disputed domain name, and (v) the Respondent ignored the Complainant’s offer to settle the dispute concerning the disputed domain name and continued to use it for its website for commercial gain. Overall, it is abundantly clear that the Respondent was well aware of the Complainant and its business activities when the Respondent registered the disputed domain name in an effort to cause Internet consumers to believe that there was a relationship between the Respondent and the Complainant.

There is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.

Accordingly, the evidence shows that the Respondent more likely than not knew the Complainant’s trademark and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark for commercial gain, in violation of paragraph 4(b)(iv) of the Policy.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 name, <petplan20.com>, be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: February 4, 2022