The Complainant is Pet Plan Ltd, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is John Souza, Interactive Media Ventures, LLC, United States of America (“United States” or “US”).
The disputed domain name <wellnesspetplans.com> (the “Disputed Domain Name”) is registered with Sea Wasp, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 30, 2020, 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 October 5, 2020.
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 October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 5, 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.
The Complainant was founded in 1976 as a company based in Brentford, United Kingdom. It 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 one of the world’s foremost financial services providers.
The Complainant provides pet insurance for domestic and exotic pets both in the United Kingdom and in many countries of the world through various licensees. Current territories in which the Complainant is licensed are Canada (“CA”), US, Australia, New Zealand, Brazil, Germany, France, Spain and the Netherlands. The Complainant offers insurance for dogs, cats, rabbits, horses, reptiles, birds, and small mammals. In addition, it offers insurance to pet care professionals and a pet finding services.
The Complainant has continually operated under the Pet Plan name and has used the PETPLAN mark in connection with its pet insurance products and services.
Under the PETPLAN trademark, the Complainant offers a wide range of pet insurance products. These products range from individual policies for dog/puppy, cat/kitten, rabbit, horse or other exotic pet insurance for anyone in the business of pet care.
The Complainant has won numerous awards including the World Branding Awards – Brand of the Year 2017-2018 and 2019-2020, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017.
The Complainant presented evidence of the ownership of the following trademarks:
|
Trademark |
Jurisdiction |
Registration Number |
Registration Date |
|
PET PLAN |
US |
3161569 |
2006 |
|
PETPLAN & (Design) |
US |
4524285 |
2014 |
|
PET PLAN |
CA |
TMA 463628 |
1996 |
|
PET PLAN |
CA |
TMA 592526 |
2003 |
|
PETPLAN |
UK |
2052294 |
2001 |
|
PETPLAN |
UK |
2222270 |
1997 |
|
PETPLAN |
European Union |
000328492 |
1997 |
|
PETPLAN |
European Union |
001511054 |
2002 |
According to the Complainant in October 2019, both Petplan UK and Petplan North America featured in a five-market research called Global Pet Insurance Market Growth Analysis, Forecasts to 2025, which studied inter alia, key players of the Global Pet Insurance market.
Moreover, the Complainant regularly appears on websites comparing the best pet insurance policies.
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 websites are: “www.gopetplan.com” and “www.petplan.co.uk”.
The Complainant has made significant investment to advertise and promote its PETPLAN trademark worldwide in the media and in the Internet over the years.
The Respondent registered the Disputed Domain Name on February 15, 2006. The Disputed Domain Name does not resolve to an active website.
The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for the transfer of the Disputed Domain Name, are present in this case.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established and presented enough evidence that it has rights in the registered trademark PET PLAN and PETPLAN.
The Disputed Domain Name <wellnesspetplans.com> incorporates the entirety of the Complainant’s trademarks PETPLAN with the addition of the word “wellness” and the letter “s” at the end of the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark PETPLAN because it incorporates the trademark in its entirety, beginning with the word “wellness” and ending with the letter “s”, which does not prevent a finding of confusing similarity.
By registering the Disputed Domain Name, the Respondent has added the dictionary term “wellness” to a pluralized version of the Complainant’s PETPLAN trademark, thereby making the Disputed Domain Name confusingly similar to the Complainant’s trademark.
Past UDRP panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks. See the decision in the Inter IKEA Systems B.V. v. Franklin Lavalle / IkeaCuisine.net, WIPO Case No. D2015-2042. Also, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “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”.
The Panel finds that that the addition of the letter “s” to the end of Complainant’s PETPLAN trademark does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark for purposes of the first element confusing similarity test, and other UDRP panels who have already decided cases involving the Complainant, have the same opinion, see e.g. Pet Plan Ltd. v. Mark Higginbotham, WIPO Case No. D2018-0996, finding that for the purpose of assessing confusing similarity, the addition of the single letter “s” to the Complainant’s PETPLAN trademark is to be ignored; see also Pet Plan Ltd. v. Private Registration, WIPO Case No. D2017-1068 holding that “the disputed domain name is confusingly similar to Complainant’s PETPLAN mark as it contains Complainant’s PETPLAN mark in its entirety and the only difference between Complainant’s mark and the disputed domain name is the addition of the letter “s””.
Therefore, the Panel concludes that the first element of the Policy has been established.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of having to prove on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of WIPO Overview 3.0.
The Complainant contends that it is not affiliated or associated with the Respondent in any way.
The Complainant also argues that it has not authorized or given any license to the Respondent to register, use or include its trademark PETPLAN in a domain name. Also, the Complainant claims that the Respondent is not commonly known by the Disputed Domain Name nor the name “Petplan”.
The Panel finds that the Complainant has made out a prima facie case. In this case, the Respondent did not file a response, therefore it did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
Based on the record, the Panel finds that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, or any legitimate noncommercial or fair use, because in fact the Disputed Domain name is not in use.
The Panel visited the website resolving from the Disputed Domain Name and there is no content at all.
There is no evidence that the Respondent is commonly known by the Disputed Domain Name as an individual, business or other organization.
In this case, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
For all the above-mentioned reasons the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled.
In this case, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith, due to the fact that it reproduces the Complainant’s well-known registered trademark PETPLAN. For this reason, before registering the Disputed Domain Name the Respondent knew or should have known the relevance and famous nature of the trademark PETPLAN.
The Complainant and its trademark PETPLAN are well known worldwide, and as stated in section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can create a presumption of bad faith. This case is not an exception, it is highly likely that the Respondent knew the relevance of the trademark, reproducing it in the Disputed Domain Name, which only aggregates the name of the word “wellness” and the letter “s” at the end of PETPLAN.
The Respondent did not present any evidence to rebut the presumption of bad faith, and the Panel finds that the registration of the Disputed Domain Name was done in bad faith.
The Panel finds that the Respondent is also using the Disputed Domain Name in bad faith, because it is holding the Disputed Domain Name without making any use of it.
The Complainant and its PETPLAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services since 1976 and registered its first trademark in 1997, which predates the Respondent’s registration of the Disputed Domain Name on February 15, 2006. Furthermore, the Complainant’s US licensee has owned and used the domain name comprising the Complainant’s trademark since October 2004, well before registration of the Disputed Domain Name. At the time of registration of the Disputed Domain Name, 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 per se. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to Respondent’s registration of the Disputed Domain Name, the Complainant has been in business for over 40 years. It is also consistently ranked as the top pet insurance provider in North America and the UK. As a pioneer in its field, the Complainant has had numerous awards to its credit, including World Branding Awards – Brand of the Year 2017-2018 and 2019-2020, and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017, which demonstrates the Complainant’s fame. Further, performing searches across a number of Internet search engines for “wellness petplans” returns multiple links referencing the Complainant and its business. See WIPO Overview 3.0 at section 3.2.2 “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark.”. Given the Complainant’s worldwide reputation and presence on the Internet, indicates that the Respondent was or should have been aware of the marks prior to registering the Disputed Domain Name.
In this case, the Disputed Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Name, factors that this Panel considers as relevant for a finding of bad faith registration and use. Also, the Disputed Domain Name currently resolves to an inactive site and is not being used, though past UDRP panels have noted that the word bad faith “use” does not require a positive act on the part of the Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use. As the panel in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 found, “It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in “bad faith”. See also AlitaliaLinee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260: finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose.
The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use, as the WIPO Overview 3.0 at section 3.6 says: “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”.
The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330, “failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”. In the present case, the Panel finds that by not answering the Complainant’s attempts to resolve the dispute is further evidence of bad faith.
On the basis of the distinctiveness and significant reputation of the Complainant’s registered trademark PETPLAN, and the absence of any evidence of possible good faith by the Respondent, the Panel finds that the Complainant has successfully established 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 <wellnesspetplans.com> be transferred to the Complainant
Ada L. Redondo Aguilera
Sole Panelist
Date: November 19, 2020