WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. David Jackson, Agent Franchise LLC

Case No. D2016-0246

1. The Parties

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 David Jackson, Agent Franchise LLC of Corona, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <diversifiedpetplans.com> (the “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 February 9, 2016. On February 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 February 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2016.

The Center appointed Tee Jim Tan S.C. as the sole panelist in this matter on March 15, 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 is Pet Plan Ltd, a company which was founded in 1976 and presently based in Brentford, United Kingdom. It is the proprietor of a number of trademark registrations, as exhibited with the Complaint, for the word marks PET PLAN and PETPLAN (the “Marks”), as well as device marks bearing either of the Marks (both the Marks and the device marks will be collectively referred to as the “PETPLAN Marks”). The PETPLAN Marks, registered between 1996 to 2014, are registered in, inter alia, the United States, the European Union, Canada, Australia and the United Kingdom. The Complainant owns numerous domain names, including its primary domain names <petplan.co.uk> and <petplan.com> since 1994 and 1996 respectively. The Complainant is currently a subsidiary of Allianz Insurance plc (part of the Allianz Global Group) which is one of the largest general insurers in the United Kingdom.

The Complainant provides a wide range of pet insurance products for domestic and exotic pets globally. It offers pet insurance products under the PETPLAN Marks and has spent a significant amount of money promoting and developing the PETPLAN Marks.

The Respondent is the registrant of the Domain Name at which the website “www.diversifiedpetplans.com” is located. The Domain Name was registered on January 20, 2015.

5. Parties’ Contentions

A. Complainant

Amongst others, the Complainant contends as follows:

(1) It has very strong rights in the PETPLAN Marks based on its extensive use of the same, including in connection with its domain names and the numerous trademark registrations of the PETPLAN Marks.

(2) The Domain Name is identical or confusingly similar to the PETPLAN Marks for the following reasons:

(a) The Respondent has added the generic, descriptive term “diversified” to the Complainant’s PETPLAN Marks, and the fact that such a term is closely linked and associated with the Complainant’s brand (i.e., pet insurance and the variety of the same) only serves to underscore the confusing similarity between the Domain Name and the PETPLAN Marks. This in fact enhances the likelihood of confusion.

(b) The addition of the letter “s” as a suffix, which pluralizes the PETPLAN Marks, does not negate the finding of confusing similarity.

(3) The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:

(a) The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests.

(b) The Respondent is not sponsored by or affiliated with the Complainant in any way, and the Complainant has not given the Respondent permission to use the PETPLAN Marks in any manner, including in domain names.

(c) The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites and presumably received pay-per-click fees from the linked websites that were listed. Specifically, the Respondent is neither using the Domain Name to provide a bona fide offering of goods nor for a legitimate noncommercial or fair use.

(d) The Respondent’s use of the Domain Name has absolutely no relationship to the terms that comprise the Domain Name.

(e) The Respondent has failed to make use of the Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Domain Name and website, which evinces a lack of rights or legitimate interests in the Domain Name.

(4) The Domain Name was registered and is being used in bad faith for the following reasons:

(a) The Respondent registered the Domain Name on January 20, 2015, well after the Complainant registered several of the PETPLAN Marks with the United Kingdom Intellectual Property Office and United States Patent and Trademark Office in 1997 and 2006.

(b) By registering the Domain Name that adds the generic, industry term “diversified” to the front of the Complainant’s famous PETPLAN Marks, and the letter “s” to the end, the Respondent created a domain name that is confusingly similar to the PETPLAN Marks. By reason of this, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

(c) The PETPLAN Marks are so closely linked and associated with the Complainant that the use of the same, or any minor variation of them, strongly implies bad faith.

(d) The presence of third-party, pay-per-click links previously available at the Domain Name’s website is evidence of bad faith registration and use.

(e) The inactivity of the site to which the Domain Name resolves indicates bad faith on the part of the Respondent.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:

(1) The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) The Domain has been registered and is being used in bad faith.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trademark registrations for the PETPLAN Marks in several countries. It is incontrovertible that the Complainant has been providing pet insurance products under the PETPLAN Marks for several decades and has operated its primary websites “www.petplan.co.uk” and “www.petplan.com” since 1994 and 1996 respectively. The Complainant has also provided evidence showing that the PETPLAN Marks are widely recognized as pet insurance providers and enjoy goodwill and reputation in this regard. Hence, the Panel is satisfied that the PETPLAN Marks are distinctive of the Complainant’s products and that the Complainant has rights in the PETPLAN Marks.

It is noted that the Domain Name incorporates the PETPLAN Marks in its entirety. Thus, in the Panel’s view, the Domain Name is substantially similar to the PETPLAN Marks in visual and aural terms, and the similarity is likely to mislead the public and Internet users to believe, and to act on the belief, that the Domain Name belongs to the Complainant or is in some way associated with the Complainant. Further, there is confusing similarity due to the fact that the website to which the Domain Name resolves previously directed Internet users to a website featuring advertisement and links to the Complainant’s competitors.

The Panel agrees that the likelihood of confusion is unlikely to be dispelled by the addition of the generic term “diversified” and the addition of the letter “s” as a suffix. In this regard, it agrees with the panel in Pet Plan Ltd v. Nicholas Plagge / SeniorTours Vacations, WIPO Case No. D2015-1691, which held, in relation to the domain name <healthypetsplan.com>, that the addition of the letter “s” and the addition of the term “healthy” do not change the overall impression created by the disputed domain name, because the essence of the PETPLAN Marks remain. Further, the addition of the term “diversified” in the Domain Name only enhances the likelihood of confusion with the Complainant’s business, especially given that it provides a wide variety of pet insurance products. In the Panel’s view, the above findings are reinforced by the fact that the Complainant owns the domain names <petplan.co.uk> and <petplan.com>. Accordingly, in the Panel’s view, the addition of the letter “s” and the term “diversified” would in fact increase the likelihood of confusion.

For the above reasons, the Panel finds that the first element under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, would establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:

(1) 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 before any notice to the Respondent of the dispute; or

(2) The Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(3) 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.

It is clear from the evidence submitted that the Respondent is not licensed or otherwise authorized by the Complainant to use the PETPLAN Marks. The evidentiary burden thus shifts to the Respondent to rebut the prima facie case established by the Complainant based on the evidence available. In this regard, the Panel agrees with the views of the panel in Belupo d.d. v.WACHEM d.o.o., WIPO Case No. D2004-0110:

“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complaint [sic] in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”

Regrettably, the Respondent has not submitted a Response to prove any of the circumstances listed under paragraph 4(c) of the Policy, or any other circumstances that may reasonably give the Respondent a right to or a legitimate interest in the Domain Name.

It was not shown that the Respondent, before receiving notice of the dispute, was using or making preparations to use the Domain Name or names corresponding to the Domain Name in connection with a bona fide offering of goods or services. There is also no evidence that the Respondent is commonly known by the Domain Name. The Respondent is identified as “David Jackson, Agent Franchise LLC”, which bears no relevance or similarity to the Domain Name. The Panel further notes that the Domain Name resolved to a blank page with no content at the time of the Complaint.

The failure to submit a Response reflects adversely upon the Respondent. In this regard, the Panel is guided by paragraph 14 of the Rules which states:

“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

While the Respondent’s default does not automatically result in a decision in favour of the Complainant, the Panel may draw negative inferences from the Respondent’s silence, particularly with respect to those issues uniquely in the knowledge and possession of the Respondent. The Panel is in agreement with the views in Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, wherein the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”. A similar inference can be made in the present case.

In light of the foregoing, the Panel concludes that the Respondent does not have any rights or legitimate interests in the Domain Name and finds that the second element under paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances, without limitation, which shall be evidence of the registration and use of the Domain Name in bad faith:

(1) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(2) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(3) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(4) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

By failing to file a Response to the Complaint, the Respondent did not take the opportunity to demonstrate that it had legitimate reasons to register and use the Domain Name and to assist the Panel to consider if the claims are legitimate and properly made out. If the Respondent legitimately registered and/or used the Domain Name in good faith, it should have challenged the claims made by the Complainant in a Response.

Separately, there are numerous cases decided under the Policy which indicate that a finding of bad faith may be made when the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name. An example is the case of Turkcell IIetisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038.

In the present case, the Complainant has registrations of the PETPLAN Marks worldwide which pre-date the Respondent’s registration of the Domain Name on January 20, 2015. The Complainant has also produced documentary evidence, such as an extract from its website “www.petplan.co.uk”, numerous domain name registrations and a list of the awards won by the Complainant, showing its use of the PETPLAN Marks for several years. Hence, it is unlikely that the Respondent was unaware of the PETPLAN Marks prior to the registration of the Domain Name on January 20, 2015. This is reinforced by the fact that the Respondent had registered the Domain Name with the additional term “diversified”, which is indicative of the Respondent’s knowledge of the nature of the Respondent’s business, namely, the sale of a wide variety and selection of pet insurance products for different types of pets.

In these circumstances, it can be inferred from the Respondent’s choice of the Domain Name that its intent was to create a false impression of an association with the Complainant.

The above arguments, in association with the use of the Domain Name as described above, fall squarely within the conduct described by paragraph 4(b)(iv) of the Policy.

By reason of the aforesaid, the Panel is of the view that the Domain Name was registered and is being used by the Respondent in bad faith. The Panel hence finds that the third element under paragraph 4(a)(iii) of the Policy is satisfied.

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 Domain Name <diversifiedpetplans.com> be transferred to the Complainant.

Tee Jim Tan, S.C.
Sole Panelist
Date: March 29, 2016