WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Plan Ltd v. Registration Private, Domains By Proxy, LLC / Augusto Valent

Case No. D2016-2204

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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Augusto Valent of Sao Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <portopetplan.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 October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2016, 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 November 3, 2016 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 8, 2016.

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 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2016.

On December 3, 2016, an email was sent to the Center by the Respondent, in which he seemingly indicated he may no longer be interested in the disputed domain name.

In order to explore possible settlement options, the Complainant requested a 30 day suspension of the proceedings on December 8, 2016. The Center suspended the proceedings on December 9, 2016.

None of the parties submitted any message that a settlement had been reached as to the disputed domain name. On January 6, 2017, the Complainant requested the reinstitution of the proceedings. The Center granted said request on the same day.

The Center appointed Kiyoshi Tsuru as the sole Panelist in this matter on January 11, 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.

4. Factual Background

The Complainant is Pet Plan Ltd, a company originated in the United Kingdom that provides pet insurance services for domestic and exotic pets in the United Kingdom and around the globe.

The Complainant is a subsidiary of Allianz Insurance plc, one of the largest general insurance companies in the United Kingdom and part of Allianz Global Group, one of the world's foremost financial services providers.

The Complainant owns the following trademark registrations:

Additionally, the Complainant owns the following domain names:

The Respondent registered the disputed domain name <portopetplan.com> on May 2, 2012.

The disputed domain name resolves to what appears to be a blog in Portuguese related to animal care.

5. Parties' Contentions

A. Complainant

The Complainant argued the following:

I. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the Complainant is the owner of the PETPLAN trademark.

That the Complainant is not required to register its trademark within the country of the Respondent in order to protect its rights in said trademarks.

That the generic Top-Level Domain ("gTLD") ".com" does not prevent the disputed domain name from being identical or confusingly similar to the Complainant's trademark.

That the disputed domain name contains the Complainant's trademark in its entirety, along with the generic term "porto" (Portuguese term for port, which means "harbor" or "haven").

That the addition of said generic term is not sufficient to elude similarity between the disputed domain name and the Complainant's trademark.

That the disputed domain name is confusingly similar to the Complainant's trademark PETPLAN.

II. The Respondent has no rights or legitimate interests in respect the disputed domain name.

That the Complainant holds several international registrations that cover the trademark PETPLAN.

That the Respondent is not sponsored by, or affiliated with the Complainant in any way.

That the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant's trademark.

That the Respondent is not commonly known by the disputed domain name.

That the Respondent is making neither a bona fide offering of goods or services, nor a legitimate, noncommercial fair use of the disputed domain name.

That the disputed domain name directs visitors to a minimally active website which was last updated in 2012, featuring various articles related to domesticated animals.

That the entire content of the website to which the disputed domain name resolves is in Portuguese, except for the reference to the Complainant's trademark comprised therein.

That the Respondent is using the Complainant's PETPLAN trademark to direct visitors to a website unrelated to PETPLAN.

III. The Disputed domain name was registered and is being used in bad faith.

That the Respondent registered the disputed domain name on May 2, 2012, years after the Complainant had filed applications for registration of its PETPLAN trademark before the UKIPO in 1996 and INPI in 2007, respectively, and after the Complainant had registered the domain name <petplan.co.uk> in 1996.

That the Respondent registered the disputed domain name after the Complainant and its PETPLAN trademark had become famous and well known. That the foregoing demonstrates that the Respondent registered the disputed domain name in bad faith.

That by registering the disputed domain name, the Respondent has created a risk of confusion in relation to the Complainant's trademark PETPLAN, and the Complainant's domain name <petplan.co.uk>.

That the term "petplan" is not a common shortening for the term "pet insurance plan".

That the Respondent has demonstrated knowledge of (and familiarity with) the Complainant's brand and business.

That the only English words found in the content of the website to which the disputed domain name resolves, are "pet" and "plan".

That it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant's trademarks at the time when the disputed domain name was registered.

That at the time of registration of the disputed domain name, the Respondent knew or should have known of the existence of the Complainant's trademark PETPLAN.

That the registration of a domain name that comprises well known trademarks constitutes bad faith per se.

That at the time when the Complaint was filed, the Respondent had employed a privacy service to hide his identity.

That the Respondent has ignored the Complaint's attempts to resolve this dispute outside of this administrative proceeding.

B. Respondent

The Respondent did not formally reply to the Complainant's contentions.

On December 3, 2016, the Respondent sent an email to the Center, in which he explained that he had created a blog around 2011 and 2012, which has not been in use after these years. The Respondent added however that he may no longer be interested in the disputed domain name ("Por mim não tem problema algum, pode ficar com o domínio para o reclamante").

6. Discussion and Findings

As the Respondent has failed to formally reply to the Complainant's assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

In his email sent to the Center, the Respondent indicated that he may have no particular ongoing interest in the disputed domain name.

Later on, on December 8, 2016, the Complainant requested a 30 day suspension of the proceedings, in order to explore settlement options. The Center suspended the proceedings on December 9, 2016.

On January 6, 2017, The Complainant submitted a communication to the Center, requesting that the proceedings be reinstated, explaining that "the Parties were unable to settle the matter".

In light of the above, it is not clear whether the Respondent had in fact consented to a transfer of the disputed domain name; the Respondent did express that he was not interested in the disputed domain name, but according to the Complainant, the Parties were not able to reach a settlement during the 30 day suspension period granted by the Center, and thus the disputed domain name was not relinquished by the Respondent.

In such event, it is the duty of this Panel to analyze the three factors set forth in Paragraph 4(a) of the Policy:

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of the PETPLAN trademark.

The disputed domain name <portopetplan.com> is confusingly similar to the Complainant's trademark PETPLAN, as it comprises said trademark in its entirety. The Complainant has submitted evidence showing that it is the owner of several trademark registrations for PETPLAN, which have not been contested by the Respondent. The inclusion of the word "porto" is not sufficient to differentiate the disputed domain name from the Complainant's trademark (seeSociété AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464).

The addition of the gTLD ".com", in this case, is immaterial for purposes of assessing confusing similarity (see, Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The Panel finds that the disputed domain name is confusingly similar to the Complainant's PETPLAN trademarks, and as such the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) 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.

In addition to holding diverse trademark registrations for PETPLAN around the world, the Complainant has argued that its trademark PETPLAN is well known in the pet insurance industry, and has filed evidence of having earned a number of awards, as was noted by a previous decision issued under the Policy (see Pet Plan Ltd v. Nicholas Plagge / SeniorTours Vacations, WIPO Case No. D2015-1691). This assertion has not been disputed by the Respondent.

The Complainant denies to have licensed, authorized, or permitted the Respondent to have registered domain names incorporating the trademark PETPLAN. The Complainant asserts that the Respondent is not sponsored by, or affiliated with the Complainant in any way. The Respondent did not prove otherwise.

The Respondent has not proven to have been commonly known by the disputed domain name.

According to the Respondent, he has ceased his use of the disputed domain name and the website to which it resolves since at least 2012. The Respondent's email sent to the Center shows a lack of interest in pursuing further use of the disputed domain name.

The Complainant has established a prima facie case that the Respondent possesses no rights to, or legitimate interests in the disputed domain name. This has shifted the burden of proof to the Respondent, who must then rebut such claims with clear evidence (see inter alia Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222; and Eversheds LLP v. Wang Xuesong, WIPO Case No. D2016-2040). As the Respondent has not rebutted any such claims, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent 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

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The Complainant filed some printouts of the website to which the disputed domain name resolves. This evidence however tends to validate the Respondent's statement concerning the creation and making available of a blog associated to the disputed domain name.

The Complainant claims that, out of the entire content of the Respondent's website, the only words in the English language comprised therein consist of a reference to the PETPLAN trademark, showing that the Respondent is aware of the Complainant's trademark registration. However, the evidence found on the record does not show that the website to which the disputed domain name resolves displays the term "Porto Pet Plan" as a trademark, or that said term is being used as a product or service differentiator, or a source identifier; it seems to be merely used to re-reference the disputed domain name itself in the website header.

The Complainant asserts that, considering the Complainant's fame and recognition regarding the trademark PETPLAN, the Respondent must have been aware of the existence of the Complainant's trademark when registering the disputed domain name, or at least would have come upon it through an Internet search. However, the Respondent seems to have used the term "Porto Pet Plan" as a descriptive title for his blog, and not as a trademark. No evidence of abusive registration of the disputed domain name under the Policy has been found by the Panel in the case file.

The Complainant relies on an alleged previous knowledge of its trademark by the Respondent as sufficient proof of bad faith registration. The Complainant has not however filed enough evidence to support this assertion. This assertion is furthermore not supported by the contents of the website to which the disputed domain name resolves.

Despite the existence of senior trademark registration certificates and a recognized brand of the Complainant, and considering the Respondent's non-trademark use of the term "Porto Pet Plan" as a title of an actual blog which content is devoted to noncommercial postings related to animal care matters over the span of many months, and in the absence of evidence showing the Respondent's knowledge of the existence of the Complainant's trademark registrations, constructive notice per se does not suffice to establish bad faith registration under the Policy (see mutatis mutandi 5B Investments, Inc. v. RareNames, WebReg, WIPO Case No. D2008-0146).

Considering that the website to which the disputed domain name resolves does not contain or display advertisements or pay-per-click elements, which would translate into a revenue for the Respondent, the Respondent does not seem to have intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website (Paragraph 4 (b)(iv) of the Policy).

In light of the above and absent sufficient evidence to the contrary, this Panel concludes that the Complainant has failed to meet its burden of proving bad faith registration and use of the disputed domain name under paragraph 4(a) of the Policy. The Policy is designed to solve clear-cut cases of abusive conduct involving a domain name. No such conduct has been proven on the record available in this proceeding.

While the Policy has a specific and narrow purpose, and provides for limited remedies, any finding under said Policy leaves intact the rights of the Complainant to bring any actions that it deems applicable to its claim before national courts, or to re-file a case under the Policy, should new circumstances (including correspondence between the parties showing the Respondent's intent, and more particularly the manner in which the website is used e.g., if it were later used for non-blog purposes such that an inference of pre-text would emerge) arise evidencing bad faith registration and use.

7. Decision

For the foregoing reasons, the Complaint is denied.

Kiyoshi Tsuru
Sole Panelist
Date: January 24, 2017