The Complainant is Pet Plan Ltd of Guildford, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1241410113 of Toronto, Canada / Paul Richmond, 808Paul LLC of Rochester, Michigan, United States of America ("United States"), represented by Steven Rinehart, United States.
The disputed domain names <cheappetplan.com> and <ipetplan.com> are registered with Google Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center"), on November 14, 2017, with reference to the disputed domain name <cheappetplan.com>. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <cheappetplan.com>. On November 15, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <cheappetplan.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2017, 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 November 21, 2017.
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 November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. The Response was filed with the Center on December 12, 2017. In the Response, the Respondent stated it had also registered the disputed domain name <ipetplan.com>.
On December 15, 2017, the Complainant sent an email communication to the Center requesting to include the additional domain name <ipetplan.com> in this case. The Center replied, on December 18, 2017, indicating that the Panel would determine, when appointed, whether or not to accept the addition of the new domain name and order further procedural steps.
The Center appointed Luca Barbero as the sole panelist in this matter on December 26, 2017. 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 January 8, 2018, the Panel issued the Administrative Panel Procedural Order No. 1 ("Panel Order No. 1") stating that, in view of the circumstances of the case, it found fair and practicable to consider the additional domain name <ipetplan.com>, and that such addition would not be prejudicial to the Respondent, subject to confirmation by the relevant Registrar that this domain name – registered, according to the public WhoIs records at that time, in the name of the privacy service Contact Privacy Inc. – was actually registered by the Respondent. The Panel thus requested that the Center transmit to the Registrar a query for registrar verification in connection with the domain name <ipetplan.com> and forward to the Panel by email its verification response disclosing the full underlying registrant and contact information for this domain name.
On January 9, 2018, the Center forwarded to the Panel the Registrar's verification response, confirming that the Respondent was listed as the registrant of the domain name <ipetplan.com> as well.
On January 12, 2018, the Panel issued the Administrative Panel Procedural Order No. 2 ("Panel Order No. 2"), in which it stated that, in light of the outcome of the Registrar's verification, and exercising its powers, according to paragraphs 10 and 12 of the Rules, it deemed it appropriate to accept the Complainant's request to include also the domain name <ipetplan.com> in this proceeding, and invited i) the Complainant to provide any additional comments it may wish to make regarding the Respondent's actions limited to the registration and use of the domain name <ipetplan.com> by January 19, 2018; and ii) the Respondent to submit any reply to the Complainant's statements regarding the registration and use of the domain name <ipetplan.com> by January 26, 2018. It was also stated that, upon receipt of the Parties' Supplemental Filings or at the expiry of the 14 days period, the Panel would have proceeded to render its decision based on the documents submitted.
On January 17, 2018, the Complainant sent an amended Complaint in response to Panel Order No. 2 to the Center. The Respondent did not send any submission in reply to the Complainant's submission within the due date or otherwise provided in the Panel Order No. 2.
The Complainant was founded in 1976 in the United Kingdom and is now a subsidiary of Allianz Insurance PLC, part of the Allianz Global Group.
The Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and around the world through various licensees. Current territories in which the Complainant's trademark PETPLAN is licensed are the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. Besides offering insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals, the Complainant provides insurance to pet care professionals and a pet finding service.
The Complainant is the owner of trademark registrations including the wording "petplan" or "pet plan" in various jurisdictions, including the following:
- United States trademark registration No. 3161569 for PET PLAN (word mark), registered on October 24, 2006 in International classes 16, 36 and 41; and 4524285 for PETPLAN (figurative mark), registered on May 6, 2014, in International classes 6, 16, 18, 35, 36, 41 and 44;
- United Kingdom trademark registration No. 2052294 for PETPLAN (figurative mark), registered on January 17, 1997 in class 36; and 2222270 for PETPLAN (figurative mark), registered on April 6, 2001 in classes 6, 16, 25, 35, 36, 41, 42 and 45;
- European Union trademark registration No. 000328492 for PETPLAN (figurative mark), registered on October 16, 2000 in class 36; and 001511054 for PETPLAN (figurative mark), registered on December 18, 2001 in classes 16, 25, 26, 35, 36, 41 and 42; and 011470465 for PETPLAN (figurative mark), registered on for PETPLAN (figurative mark), registered on July 12, 2013 in classes 6, 16, 18, 35, 36, 41 and 44.
The Complainant operates its main website at the domain name <petplan.co.uk>, which was registered before August 1996, and is also the owner of the domain name <petplan.com>, registered on March 11, 1996.
The disputed domain names <cheappetplan.com> and <ipetplan.com> were registered on June 2, 2017 and August 9, 2017, respectively, and are not pointed to active websites.
The Complainant contends that the disputed domain names are confusingly similar to its trademark PETPLAN, since the addition of the dictionary word "cheap" and of the letter "i" to the Complainant's trademark is not sufficient to overcome a finding of confusing similarity pursuant to paragraph 4(a)(i) of the Policy.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names since i) the Respondent is not sponsored by, or affiliated with, the Complainant in any way, and the Complainant has not given the Respondent any permission to use the Complainant's trademarks in any manner; ii) the Respondent is not commonly known by the disputed domain names; and iii) the Respondent registered the disputed domain names significantly after the Complainant's filing of its trademarks and the Complainant's registration of its domain name <petplan.co.uk>.
The Complainant asserts that, at the time of registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith.
To demonstrate the well-known character of its trademark, the Complainant states to have marketed and sold its goods and services under the trademark PETPLAN since 1997, that it has used the mark in connection with pet insurance for over 20 years, and that the Complainant has won numerous awards including the "Your Dog Best Pet Insurance" and "Your Cat Best Pet Insurance" from 2008 to 2016, the "World Branding Awards – Brand of the Year" in 2017-2018, and the "Consumer MoneyWise Awards Most Trusted Pet Insurance Provider" in 2017.
The Complainant also states that performing searches across a number of Internet search engines for "cheap petplan" returns multiple links referencing the Complainant and its business.
The Complainant also highlights that, in its Response to the initial Complaint, the Respondent submitted a screenshot of a Google search of the terms "pet plan" trying thereby to prove that those terms are generic, but said screenshot shows that virtually all results in the first three pages of the Google search relate to the Complainant. In view of this evidence, the Complainant claims that the Respondent cannot reasonably claim to have been unaware of the Complainant's trademark.
The Complainant further states that numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant's mark, and thus having registered a domain name in bad faith, where the complainant's mark is well-known and the circumstances support such a finding, as is the case here.
As to the inactive use of the disputed domain names, the Complainant cites the factors listed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), that have been considered relevant in applying the passive holding doctrine, namely:
(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 Complainant informs the Panel that it sent a cease-and-desist letter to the Respondent, on September 25, 2017, to which the Respondent replied merely stating: "Incorrect". On September 28, 2017, the Complainant's representative again requested voluntary transfer of the disputed domain name to the Respondent, which replied: "Absolutely not".
The Complainant highlights that, upon receiving the Complainant's cease-and-desist letters, the Respondent could have used this opportunity to justify his proposed good faith use of the disputed domain name <cheappetplan.com> but chose not to. In addition, only after the initial Complaint was filed the Respondent opted to reveal that it had registered another domain name infringing the Complainant's trademark, i.e. <ipetplan.com>, and that it intended to use the disputed domain names to offer pet insurance.
The Complainant therefore states that, given the notoriety of the PETPLAN trademark both in the United Kingdom and the United States, and under the reasonable assumption that the Respondent must be knowledgeable to some degree about pet insurance if it plans on offering it, the Respondent could not be unaware of both the Complainant and the Complainant's trademarks.
The Complainant further notes that the Respondent, at the time of initial filing of the Complaint, had used a privacy service to hide its identity, which past Panels have held as further evidence of bad faith registration and use.
The Complainant concludes that it is more likely than not that the Respondent knew of and targeted the Complainant's trademark, and that the Respondent should be found to have registered and used the disputed domain names in bad faith.
As noted in the Procedural History (section 3 above), the Respondent filed a Response to the initial Complaint and did not submit further statements, after the issuance of the Panel Order No. 2, to reply to the Complainant's submissions with respect to the additional domain name <ipetplan.com>, that the Respondent disclosed to have registered in the Response.
In its Response, the Respondent contends that the Complainant's claimed mark is descriptive and not protectible, and alleges that the addition of the term "cheap" distinguishes the disputed domain name <cheappetplan.com> from the Complainant's trademark, thus obviating confusing similarity.
The Respondent also claims to have a legitimate interest in the disputed domain name <cheappetplan.com> and not to have registered the disputed domain name in bad faith because:
i) The use of a common word domain name related to the descriptive or generic meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services;
ii) The fact that the disputed domain name is descriptive further establishes the Respondent's legitimate interest in the disputed domain name;
iii) The Respondent has registered the disputed domain name and the following domain names describing health insurance plan offerings for pets - many of which contain the string "ins", which would be the abbreviated form of "insurance" - to register and market insurance plans using descriptive domain names relating to inexpensive insurance plans for pets:
<bestpethealthplan.com>
<doggoinsurance.com>
<individualpetinsurance.com>
<ipetplan.com>
<kittycoverage.com>
<lawpetinsurance.com>
<petinsquotes.com>
<petquotenow.com>
<puppyins.com>
<petquotenow.com>
<puppyins.com>
<quoteallpetinsurance.com>
<quotepetinsurancenow.com>;
iv) The Respondent had no knowledge of the Complainant when registering the disputed domain name;
v) The Respondent has never used the disputed domain name to compete with the Complainant;
vi) Despite its registration, the Complainant's mark PETPLAN is obviously descriptive and subject to extensive third-party use, as a Google Search for "pet plan" annexed to the Response as Annex A would show no results in the first 100 search results associated with the Complainant and all associated with health insurance plans;
The Respondent concludes that it is a good-faith registrant and user of the disputed domain name and that the Complaint was filed in an attempt by the Complainant to seize a generic domain name with no right to do so.
According to paragraph 15(a) of the Rules: "A Panel shall 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". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are 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 disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
As mentioned in section 3, the Complaint was initially filed with regard to the disputed domain name <cheappetplan.com> and, only after the notification of the Complaint and the filing of the Response, the Complainant sent an email to the Center requesting to add the domain name <ipetplan.com> to this proceeding.
Pursuant to paragraph 3(c) of the Rules and in accordance with paragraph 10(e) of the Rules, consolidation of multiple domain name disputes is appropriate where the disputed domain names are registered by the same domain-name holder, or there are indicia of common control of the disputed domain names, and if consolidation would be equitable and procedurally efficient. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
With regard to the addition of domain names to a case following complaint notification, the WIPO Overview 3.0, section 4.12.2, states the following: "Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent's registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed. In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines)".
In view of the circumstances of the case, the Panel decided to accept the Complainant's request for addition of the disputed domain name <ipetplan.com> in this proceeding for the following reasons:
i) The Respondent disclosed to have registered the disputed domain name <ipetplan.com> in its Response and stated to have acquired said domain name and the disputed domain name <cheappetplan.com>, as well as additional domain names, "to register and market insurance plans";
ii) The disputed domain name <ipetplan.com> was originally registered through a privacy service and, therefore, the Complainant could not have been aware, based on the public WhoIs records, that the Respondent had registered it;
iii) In view of the similarities between <cheappetplan.com> and <ipetplan.com> and the Respondent's statement that it was the owner of the disputed domain name <ipetplan.com>, there appeared to be indicia of common control of the disputed domain names;
iv) The Panel found that it would have been fair and practicable to consider the additional registration and that the addition would not have been prejudicial to the Respondent, subject to confirmation by the relevant Registrar that it was actually registered by the Respondent.
Therefore, upon the Registrar's confirmation that the underlying registrant of <ipetplan.com> was actually the same entity identified as the Respondent in the initial Complaint, the Panel, exercising its powers, according to paragraphs 10 and 12 of the Rules, deemed appropriate to accept the Complainant's request to include also this domain name in this proceeding, inviting both parties to submit possible further comments with respect to the disputed domain name <ipetplan.com>. As highlighted above, the Complainant submitted an amended Complaint including also the disputed domain name <ipetplan.com>, whilst the Respondent did not file any additional submission.
The Complainant relies on a word trademark registration for PET PLAN, registered in the United States since 2006 for goods and services in International classes 16, 36 and 41, and on several additional figurative trademarks registered in the United States, United Kingdom and European Union which all include the term "petplan" with the addition of device elements.
As highlighted in section 1.10 of the WIPO Overview 3.0, "Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element".
The Panel finds that the core of all the Complainant's trademarks cited above is constituted by the denominative portion "petplan". Therefore, the Panel finds that the Complainant has established rights over the trademark PETPLAN for the purposes of paragraph 4(a)(i) of the Policy.
The Panel notes that the trademark PETPLAN is entirely encompassed in the disputed domain names, with the mere addition of the generic term "cheap" and of the letter "i", which are not sufficient to distinguish the disputed domain names from the Complainant's trademarks. Indeed, as found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no evidence of an authorization granted by the Complainant to the Respondent to use the trademark PETPLAN and/or to register and use the disputed domain names.
Moreover, there is no element from which the Panel could infer the Respondent's right over the disputed domain names, or that the Respondent might be commonly known by the disputed domain names or by a name corresponding to them.
The Respondent asserted to have registered the disputed domain names, along with additional domain names "describing health insurance plan offerings for pets", in order to "register and market insurance plans using descriptive domain names". The Respondent further stated that it registered the disputed domain name <cheappetplan.com> due to its "descriptive meaning as it relates to inexpensive insurance plans for pets".
However, the Respondent has not submitted any evidence to substantiate its allegations about the intended use of the disputed domain names, which are not pointed to any active websites. Moreover, the sole document submitted to demonstrate the asserted descriptiveness of the Complainant's trademark is a screenshot of Google search results for "pet plan" showing that virtually all results in the first three pages of said Google search relate to the Complainant's PETPLAN products and services.
In view of the above, based on the records before it, the Panel finds that the Respondent has not used the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
In view of the prior registration and use of the trademark PETPLAN by the Complainant and of the well-known character of the trademark recognized also in prior UDRP decisions (see, amongst others, Pet Plan Ltd. v. Michael Vanwert, WIPO Case No. D2017-1869, Pet Plan Ltd. v. Steve Jaguden, WIPO Case No. D2017-1784, Pet Plan Ltd v. Domain Administrator, WIPO Case No. D2016-2217), the Panel finds that the Respondent's registration of the disputed domain names, confusingly similar to the Complainant's prior trademark, does not amount to a mere coincidence and that, in all likelihood, the Respondent registered the disputed domain names with the Complainant's trademark in mind.
Moreover, since the Respondent stated that its intended use of the disputed domain names was to provide insurance plans for pets, and even a Google search for "pet plan" would have revealed a number of results all related to the Complainant's PETPLAN insurance products and services (as clearly highlighted also by the screenshot submitted by the Respondent), the Panel finds that the Respondent ought to be aware, and in all likelihood was aware, of the Complainant's trademark at the time of registration.
As to the current use of the disputed domain names, they do not resolve to active websites at the time of this Decision. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, inter alia, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the case at hand, in view of the Respondent's registration of domain names confusingly similar to the Complainant's well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain names, the Respondent's use of a privacy service and the implausibility of any use of the disputed domain names which would not cause confusion with the Complainant and its trademark, the Panel finds that the Respondent's lack of use of the disputed domain names also amounts to bad faith.
In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain names in bad faith.
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 <cheappetplan.com> and <ipetplan.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: February 9, 2018