WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Joseph Zambito

Case No. D2020-1205

1. The Parties

The Complainant is Pet Plan Ltd, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Joseph Zambito, United States of America (“United States” or “US”).

2. The Domain Name and Registrar

The disputed domain name <safeguardpetplan.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 14, 2020, 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 May 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020.

The Center appointed Leon Trakman as the sole panelist in this matter on July 3, 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, Pet Plan Ltd (“Pet Plan”) provides pet insurance for domestic and exotic pets in the United States, the UK and the European Union (“EU”). It offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals. It also provides insurance to pet care professionals and a pet finding service. It was founded in 1976 and is based in Brentford, UK. It is now a subsidiary of Allianz Insurance plc, a global financial service provider. The Complainant is featured in various websites and on social media platforms, including Facebook and Twitter, with thousands of visitors and users. Such use is readily evidenced in the Complainant’s web platforms in the UK.

A list of the Complainant’s trademark registration and dates of registration are included in the table below.

The Disputed Domain Name was registered on April 3, 2010 and resolves to a pay-per-click webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its PET PLAN/PETPLAN brand has an international reputation and is widely recognized in the industry; that there are multiple indicators of its global regulation, not limited to trademark registrations, as identified in section 4 above, and media coverage and that it has continually extended its services and standing globally, including by winning global awards.

The Complainant contends that the Respondent has advanced three contentions:

i. The Disputed Domain Name is confusingly similar to the Complainant’s trademark (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1)).
ii. The Respondent has no rights or legitimate Interests in the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)).
iii. The Disputed Domain Name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that the Disputed Domain Name is confusingly similar to the Complainant’s trademark in respect of which the Respondent has no rights, contrary to the requirements of Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1). The Panel has reached that determination based on these three criteria.

Firstly, “where the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 1.2.1. Secondly, it is well recognized that, in order to establish that the Disputed Domain Name is “confusingly similar” to the Complainants trademark, no material account is taken of the Top-Level Domain (“TLD”), such as “.com”, that is used in that domain name. See WIPO Overview 3.0 at section 1.11.1. Thirdly, the addition of a dictionary term to the Disputed Domain Name does not prevent a finding of confusing similarity with the Complainant’s trademark.

These three criteria apply to the instant case in these material respects:

The Complainant is the owner of PET PLAN/PETPLAN trademark, as the Panel has identified in section 4 Factual Background above.

In registering the Disputed Domain Name, the Respondent has added the dictionary, descriptive term “safeguard” to the Complainant’s PET PLAN/PETPLAN trademark. However, the Disputed Domain Name continues to employ the Complainant’s trademark in full. This affirms that it is “confusingly similar” to the Complainant’s internationally recognized trademark.

Including the term, “safeguard”, in the Disputed Domain Name, is insufficient to avoid a finding of confusing similarity with the Complainant’s trademark in which the remainder of the Disputed Domain Name is identical to the Complainant’s trademark. See WIPO Overview 3.0 at section 1.8; Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No. D2015-2042.

Accordingly, based on the Policy, Rules and material facts of this case, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel determines that the Respondent has no tights or legitimate interests in the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2) for these reasons:

Firstly, the registration of the Complainant’s trademarks by the USPTO, CIPO, UKIPO, and EUIPO, identified in section 4 Factual Background above, confirms the Complainant’s rights in the trademark. Those registrations constitute prima facie evidence of the Complainant’s exclusive right to those trademarks.

Secondly, the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent any license, authorization, or permission to use the Complainant’s trademark.

Thirdly, the Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. See further Policy paragraph 4(c)(ii); World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642; and Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875. “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

Fourthly, the name of the Respondent, identified in the WhoIs as “Joseph Zambito,” does not resemble the Disputed Domain Name in any respect. Nor is there any evidence on record that the Respondent is commonly known by the Disputed Domain Name, or that demonstrates that the Respondent has acquired any rights or legitimate interests in the Disputed Domain Name in accordance with Policy paragraph 4(c)(ii). See further Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.

Fifthly, the Respondent is using the Disputed Domain Name to redirect Internet users to a website that provides links to third-party websites that compete with the Complainant's business in providing pet insurance and related services. While not demonstrated on the record, which would be difficult to do in practice, it is most likely that the Respondent is receiving remuneration from those third parties for facilitating Internet traffic through a pay-per-click redirection of Internet users to the websites of those third parties.

Such conduct is strong evidence that the Respondent is not using the Disputed Domain Name to make a good faith offering of goods and services under Policy paragraph 4(c)(i). Nor does that use constitute a legitimate noncommercial or fair use as allowed under Policy paragraph 4(c)(iii). As noted in the WIPO Overview 3.0 at section 2.9: “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”. This absence of a bona fide offer of goods and services is further evidenced in the absence of any license or authorization from the Complainant to use the Disputed Domain Name for the purpose of directing Internet traffic to those third party pet insurance service providers.

Finally, the Disputed Domain Name was registered significantly after the Complainant registered its trademark and its domain name. The record demonstrates that the Respondent registered the Disputed Domain Name on April 3, 2010. That date substantially postdates the date on which the Complainant filed for registration of its PET PLAN/PETPLAN trademark with the USPTO, CIPO, UKIPO, and EUIPO, and after the Complainant first used its trademark to sell pet insurance, in 1976. In addition, the registration of the Disputed Domain Name significantly post-dates the Complainant’s registration of its <petplan.co.uk> domain name in 1996, as well as its licensee’s registration of its domain name <gopetplan.com> in 2004.

The Panel concludes based on the foregoing, that there is considerable evidence on the record, or that is reasonably inferred from the record, that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel determines that the Respondent registered and is using the disputes domain name in bad faith, contrary to the requirements of paragraphs 4(a)(iii), 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules.

There are various factors evidencing bad faith registration of the Disputed Domain Name. Firstly, the Complainant’s business and trademark are widely recognized internationally and in the pet insurance industry, as is identified in section 4 Factual Background above. Indeed, the Complainant has provided its insurance service and sale of goods, since commencing use of its trademark in 1976. In contradistinction to the timing of Complainant’s registration of its trademark, the Respondent’s registration of the Disputed Domain Name occurred at a materially later date. The materiality of these factors is recognized by other UDRP panels in the past, see Pet Plan Ltd v. Contact Privacy Inc. Customer 1241410113 / Paul Richmond - 808Paul LLC, WIPO Case No. D2017-2259; 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. Secondly, it is most likely that, at the time of registering the Disputed Domain Name, the Respondent was either aware or should reasonably have known about the Complainant’s various trademarks registered internationally, including in the US, and its conduct of business over many preceding years. See in support of this second criterion, WIPO Overview 3.0 at section 3.2.2.

Regarding bad faith use of the Disputed Domain Name, the Panel finds significant evidence to support the contention. Firstly, the Policy provides explicitly that a respondent uses a disputed domain name in bad faith in “intentionally attempt[ing] to attract, for commercial gain, Internet users to [Respondent’s] website…by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [Respondent’s] website or location.” See Policy paragraph 4(b)(iv). Indeed, it is strongly evidenced on the facts of this case that the Respondent intentionally purported to use the Disputed Domain Name to create confusion between it and the Complainant’s registered trademarks and business conducted under those trademarks for multiple precedent years. The Panel identifies that evidence in relation to bad faith registration of the Disputed Domain Name in section 5.A. immediately above. Secondly, the record evidences the strong likelihood that the Respondent is intentionally using the Disputed Domain Name to take advantage of the Complainant’s trademark, reputation and accumulated goodwill in the pet insurance business. This is evidenced in the Respondent using its Disputed Domain Name to redirect Internet users to its websites and from there, to redirect them to the pet insurance or other pet supply and service entities, most probably for material financial gain at the expense of the Complainant. See further WIPO Overview 3.0 at section 3.5. That these practices constitute bad faith use of the Disputed Domain Name is evidenced in Policy paragraph 4(b)(iv). They are also evidenced in prior UDRP panels identifying the likelihood that a respondent who is using a Disputed Domain Name to attract and redirect users to other websites constitutes bad faith use. See e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Thirdly, it is evident on the record that the Respondent ignored a cease-and-desist letter from the Complainant in continuing its practices above. While the Respondent is not per se required to respond to such a letter, but when doing so is coupled with evidence of the Respondent’s bad faith use identified above, abstaining from replying further affirms such bad faith use. See too Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330; RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242. Fourthly, the fact that the Complainant delayed before bringing the Complaint above does not constitute a reason, in itself, to hold that the Complainant has somehow acquiesced in the use of the Disputed Domain Name, or otherwise impliedly foregone its right to bring the Complaint. WIPO Overview 3.0 at section 4.17. See too Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754.

In summary, the Panel determines that the Disputed Domain Name was used in bad faith; that the Respondent displayed an intention throughout to use the Disputed Domain Name that is confusingly similar to the Complainant’s trademark for duplicitous purposes; by materially replicating the Complainant’s trademark to attract Internet users to the Respondent’s website; by intending to both mislead and deceive those users that it represented the Complainant directly, or represented it through an affiliation or other association with the Complainant; and in using its website to redirect users to businesses engaged in pet insurance services and related pet supplies in competition with the Complainants long established international engagement in the pet insurance and supply industry. Indeed, it is difficult to conceive of the Respondent having a purpose or intention that diverges from such bad faith use. On a UDRP panel determining similarly in comparable circumstances, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel concludes therefore that the Respondent registered and used the Disputed Domain Name in bad faith.

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, <safeguardpetplan.com>, be transferred to the Complainant.

Leon Trakman
Sole Panelist
Date: July 17, 2020

¹ United States Patent and Trademark Office (“USPTO”)

² Canadian Intellectual Property Office (“CIPO”)

³ United Kingdom Intellectual Property Office (“UKIPO”)

⁴ European Union Intellectual Property Office (“EUIPO”)