WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Wwwsmithseo / William Smith / Whoisguard Protected / Whoisguard, Inc.

Case No. D2015-1083

1. The Parties

The Complainant is Pet Plan Ltd of Guildford, Surrey, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Wwwsmithseo / William Smith of Avon, Massachusetts, United States of America / Whoisguard Protected / Whoisguard, Inc. of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <americanpetplan.com> (the "Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2015. On June 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 30, 2015, 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 June 30, 2015.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2015.

The Center appointed Nicholas Weston as the sole panelist in this matter on July 31, 2015. 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 operates a business based in the United Kingdom selling pet insurance and ancillary offerings such as insuring pet care professionals and a pet finding service. The Complainant holds registrations for the PETPLAN trademark and variations of it in the United States of America, Canada, the United Kingdom, Australia and Europe, which it uses internationally. A sample of the registrations cited in evidence are set out below:

The UK trademark registration for the word PETPLAN has been in effect since 1996.

The Complainant conducts business on the Internet using numerous domain names containing its mark PETPLAN including <petplan.co.uk> and <petplan.com> with pet insurance related websites resolving from these domain names.

The Domain Name <americanpetplan.com> was created on March 17, 2015.

5. Parties' Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademark PETPLAN in the UK and elsewhere 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 registration of the Domain Name <americanpetplan.com>. It submits that the Domain Name is confusingly similar to its trademark, because the Domain Name incorporates in its entirety the PETPLAN trademark and that the confusing similarity is not removed by the addition of the geographical descriptor "american".

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent has no trademark rights in or license to use the Complainant's trademark. The Complainant also contends that the Domain Name appears to resolve to a page that is devoid of content which is evidence that the Respondent has not demonstrated any attempt to make a legitimate use of the Domain Name.

Finally, the Complainant alleges, inter alia, that the registration and use of the Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy. The Complainant argues that using the Complainant's PETPLAN mark in the Domain Name, "that passive holding of a domain name permits an inference of registration and use in bad faith" which in combination with evidence of hiding its identity behind a privacy service or proxy domain registrar, use of the descriptive term "american" and replying to the Complaint with a false account of why it was holding the Domain Name do, considered cumulatively, make the Complainant's case for bad faith registration and use.

B. Respondent

The Respondent did not file a formal reply to the Complainant's contentions. However, the Respondent replied to a letter of demand sent by the Complainant by email, stating that the Domain Name was used as a "personal blog" that does not seek to compete with the Complainant's business.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the 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 domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

"decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable."

A. Identical or Confusingly Similar

The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PETPLAN in the UK and a number of other countries. The Panel finds that the Complainant has rights in the mark PETPLAN in the UK, pursuant to UK Trade Mark Registration No. 2052294 registered on January 19, 1996. In any event, "the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country" (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark PETPLAN.

Turning to whether the Domain Name is identical or confusingly similar to the PETPLAN trademark, the Panel observes that the Domain Name comprises: (a) an exact reproduction of the Complainant's trademark; (b) preceded by the geographical descriptor "american"; and (c) followed by the generic Top-Level Domain (gTLD) suffix ".com".

It is well established that the top-level designation used as part of a domain name may be disregarded when considering identity or confusing similarity: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.; WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made in these circumstances is with the second-level portion of the Domain Name, specifically "americanpetplan".

It is also well established that where a domain name incorporates a complainant's distinctive trademark in its entirety, it may be found confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel finds that the addition of the word "american" is not sufficient to remove the similarity or avoid confusion. In this Panel's view, the use of this geographical descriptor exacerbates the confusion having regard to the global nature of the Complainant's insurance business.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of ways that the respondent may demonstrate rights or legitimate interests in the domain name:

(i) before any notice of the dispute, the respondent's 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Policy places the burden on the complainant to establish the absence of respondent's rights or legitimate interests in the 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 evidential burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), paragraph 2.1)

It is well established that a respondent may have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).

This Panel observes that the word "petplan" is a contraction of two descriptive words "pet" and "plan".

The Complainant has not licensed, permitted or authorized the Respondent to use the Complainant's trademark. There is no indication that Respondent was commonly known by the name PETPLAN prior to registration of the Domain Name.

The Domain Name does not appear to be making a legitimate noncommercial or fair use of the Domain Name. There is nothing in the record to rebut the Complainant's evidence. This Panel finds that the Respondent is making an illegitimate commercial use of the Domain Name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):

(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 website or location or of a product or service on your website or location."

The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The evidence supports the Complainant's contention that the Respondent registered and has used the Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 16 of the Registration Agreement to which the Respondent is a party clearly states: "You represent and warrant that neither the registration of a domain name nor the manner in which it is directly or indirectly used nor the use of other of the services infringes the legal rights of a third party." The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else's trademark, such as by conducting a trademark search or search engine search, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L'oreal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The Panel finds 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. In this Panel's view, the Respondent's conduct in registering the Domain Name with the additional geographical descriptor "American" indicates prior knowledge of the Complainant's trademark rights and warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows, supra, where the panel found that a claim that the domain name at issue, <telstra.org>, could have been registered without knowledge of the complainant's trademark, was not just implausible, but incredible).

Further, a gap of ten years between the registration of the Complainant's trademark and the Respondent's registration of the Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held UK registration for the trademark PETPLAN, UK Registration No. 2052294 FROM January 1996 predating its rights from the Respondent's registration by approximately 19 years.

Turning to the evidence that there has been no active use of the Domain Name, this is contradicted by the Respondent's email to the Complainant that asserted the Domain Name was being used for his personal blog. In the absence of a reply with evidence, this Panel draws an adverse inference against the defaulting party on this issue.

Moreover, the Panel has considered whether it should draw an adverse inference from the Respondents' use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).

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 Domain Name without the Complainant's consent or authorization, for the purpose of preventing the Complainant from registering a corresponding domain name that reflects a significant geography for its insurance business. Based on this combination of factors (see: Advance Magazine Publishers, Inc. v. Models USA Inc., WIPO Case No. D2002-0907) the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <americanpetplan.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: August 14, 2015