WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd. v. Mina Sirkin / Sirkin Children’s Trust

Case No. D2016-0009

1. The Parties

The Complainant is Pet Plan Ltd., of Guildford, United Kingdom of Great Britain and Northern Island (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Mina Sirkin / Sirkin Children’s Trust of Woodland Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <smartpetplan.com> 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 January 5, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, 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 January 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2016.

The Center appointed Alistair Payne as the sole panelist in this matter on February 8, 2016. 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 provides pet insurance for domestic and exotic pets both in the United Kingdom and around the globe through various licensees and currently in the United States, Canada, Australia, New Zealand, Brazil, Germany, and the Netherlands. In addition, it offers insurance to pet care professionals and a pet finding service. The Complainant was founded in 1976, is based in Brentford, United Kingdom and is now a subsidiary of Allianz Insurance plc. The Complainant has continually operated its business under the PETPLAN name or mark and owns trade mark registrations for PETPLAN in various countries, including in the United States under trade mark number 3161569 for PETPLAN in fancy script dating from 2004 and in the United Kingdom for PETPLAN in fancy script under trade mark registration number 2052294 dating from 1996 and a Community Trade Mark registration under number 001511054 also for PETPLAN in fancy script dating from 2000. The Complainant owns numerous domain names incorporating its PETPLAN trade mark, including <petplan.co.uk> and <petplan.com> from which it operates its main websites for its products.

The disputed domain name was registered on May 9, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as noted above. It says that the disputed domain name wholly incorporates its PETPLAN mark and only differs from the Complainant’s mark by the inclusion of the generic term “smart”. The Complainant submits that this term does not distinguish the disputed domain name or negate the degree of confusing similarity. As a result the Complainant says that the disputed domain name is confusingly similar to its PETPLAN mark.

The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and has not given the Respondent permission to use the Complainant’s trade marks. Neither, says the Complainant, is the Respondent commonly known by the disputed domain name or is it making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent must have known of its mark and business at the registration date of the disputed domain name (being May 9, 2014). By that time its trade marks in the United States and in the United Kingdom and in the European Union had been long registered and it had been in business for several decades, had been licensed in numerous countries and had been consistently ranked the number one pet insurance provider in the United Kingdom. The Complainant notes that it has numerous awards to its credit including Consumer Moneyfacts Awards – Highly Commended (2014) and Your Dog Best Pet Insurance 2013 – Winner and Your Cat Best Pet Insurance 2013 – Winner which demonstrates the Complainant’s fame. Further, says the Complainant, performing Internet searches across a number of Internet search engines would have alerted the Respondent to the Complainant, its mark and business. As a consequence the Complainant asserts that the Respondent must have, or at the least should have had, knowledge of the PETPLAN mark when it registered the disputed domain name in 2014.

The Complainant further says that the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites some of which compete with the Complainant’s business and for which the Respondent presumably receives pay-per-click fees. This, says the Complainant, amounts to evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.

The Complainant further submits that the Respondent’s failure to respond to its three cease and desist letters in 2015 is indicative of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its PETPLAN mark as set out above. These registrations are for the term “petplan” written in a fancy stylized font. There is no other element to the registrations and therefore for the purposes of the analysis under the Policy, the Panel is satisfied that the dominant element of these registrations is the term “petplan”.

The disputed domain name wholly incorporates the Complainant’s PETPLAN trade mark and only differs from it by inclusion of the commonly English word “smart”. The Panel finds that the inclusion of this word does not distinguish the disputed domain name from the Complainant’s PETPLAN trade mark and that the disputed domain name is confusingly similar to the Complainant’s trade mark. As a consequence the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not sponsored by or affiliated with the Complainant in any way and that it has not given the Respondent permission to use the Complainant’s trade marks and that the Respondent is not making a legitimate fair or noncommercial use of the disputed domain name. The Complainant has also submitted that the Respondent is not commonly known by the disputed domain name.

It further says that, for the reasons outlined under Part C below, the Respondent must have or should have known about the Complainant’s business and been aware of the PETPLAN mark at the date of registration of the disputed domain name. The Complainant says that the Respondent’s registration in these circumstances is not consistent with bona fide conduct. In addition it says that the disputed domain name merely resolves to a parking page featuring “pay per click” links that compete with the Complainant’s business and is not otherwise used by the Respondent and that this does not amount to legitimate conduct.

The Panel finds that the Complainant has made out a prima facie case under this element of the Policy and in the absence of a response there is nothing in the record to rebut the Complainant’s case. As a result, and also for the reasons set out under Part C below, the Panel infers that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

At the date of registration of the disputed domain name the Complainant’s business and PETPLAN mark were very well established, in particular in the United Kingdom. The Complainant had by that time been operating its business under the PETPLAN mark for several decades and had a licensee and a trade mark registration in the United States. It also had operations in numerous other jurisdictions through its licensees and a substantial Internet presence, in particular through its websites at “www.petplan.co.uk” and “www.petplan.com”. The Complainant also enjoys a considerable degree of renown as a consequence of the various awards received for its products.

In these circumstances the Panel infers that the California based Respondent was most likely aware of the Complainant’s business and mark when it registered the disputed domain name. The evidence before the Panel suggests that a simple Internet search at that time would have pointed to various references to the Complainant’s business and to its PETPLAN mark and equally a simple search of the United States trade mark register would also have revealed the Complainant’s United States trade mark registration. As a result the Panel infers that the Respondent registered the disputed domain name in bad faith.

There is no evidence to suggest that the Respondent has itself made a bona fide use of the disputed domain name since registration. The only use that appears to have been made is to resolve to a parking page that features pay per click links that resolve to websites that the Complainant asserts compete with its business and from which the Respondent presumably earns income. The Complainant has sent three cease and desist letters to the Respondent but has received no reply and in the absence of any Response there is nothing before the Panel to explain the Respondent’s position.

The Panel therefore infers, in terms of paragraph 4(b)(iv) of the Policy, that the Respondent has intentionally used the disputed domain name to attempt to attract Internet users for commercial gain to the pay per click landing page at the disputed domain name by creating confusion with the Complainant’s mark, which amounts to evidence of both registration and use in bad faith under the Policy.

As a result the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under the third element 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 <smartpetplan.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: February 21, 2016