WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Plan Ltd v. Domains By Proxy, LLC / Varun Uppal
Case No. D2018-1738
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 Domains By Proxy, LLC of Arizona, United States of America (“United States”) / Varun Uppal of Gurgaon, India.
2. The Domain Name and Registrar
The disputed domain name <petplan.app> 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 August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2018, 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 August 13, 2018, 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 August 16, 2018.
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 August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 21, 2018. 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 was founded in 1976 and is now a subsidiary of Allianz Insurance plc. It provides pet insurance for domestic and exotic pets in the United Kingdom, United States, Canada, Australia, New Zealand, Brazil, Germany and the Netherlands.
It is the owner of several trademark registrations for PETPLAN around the world (Annex 1 to the Complaint) amongst which:
- United Kingdom Trademark Registration No. 2052294, registered on January 17, 1997 for PETPLAN in international class 36;
- European Union Trademark Registration No. 000328492, registered on October 16, 2000 for PETPLAN in international class 36;
- European Union Trademark Registration No. 001511054, registered on December 18, 2001 for PETPLAN in international classes 16, 25, 26, 35, 36, 41 and 42;
- United States Trademark Registration No. 3161569, registered on October 24, 2006 for PETPLAN in international classes 6, 16, 25, 36, 41 and 42;
- Canada Trademark Registration No. TMA463628, registered on September 27, 1996 for PETPLAN covering providing insurance broking services in connection with health insurance for domestic animals, and
- Australia Trademark Registration No. 918123, registered on May 23, 2005 for PETPLAN in international classes 16, 35, 36 and 41.
The disputed domain name is <petplan.app> and was registered on May 10, 2018. The disputed domain name presently does not resolve to an active webpage. In the past the disputed domain name was used to redirect Internet users to a parked page displaying pay-per-click (“PPC”) advertisements and an offer for sale for USD 3,000.
5. Parties’ Contentions
A. Complainant
The Complainant asserts to be part of the Allianz Global Group, one of the world’s foremost financial services providers. Founded in 1976, the Complainant states that it specifically provides insurance for domestic and exotic pets in the United Kingdom as well as in several countries around the world through various licenses.
According to the Complainant, its PETPLAN trademark is distinctive and well known, having won numerous awards such as the Your Dog Best Pet Insurance and Your Cat Best Pet Insurance from 2008 until 2016, World Brand Awards, Brand of the Year 2017-2018 and the Consumer MoneyWise Awards – Most Trusted Pet Insurance Provider in 2017.
As to the disputed domain name, the Complainant asserts that it consists solely of its PETPLAN trademark, resulting in a domain name identical to the PETPLAN trademark and thus confusingly similar therewith.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Complainant is the owner of several trademark registrations for PETPLAN, granted by different Trademark Offices throughout the world, which constitutes prima facie evidence of the validity of the term PETPLAN as a trademark, as well as of the Complainant’s ownership of said trademark and the Complainant`s exclusive right to use it in commerce on or in connection with the goods and/or services covered by such registrations;
(ii) the Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests;
(iii) the Respondent, in the email exchanges between the Complainant’s representative and the Respondent prior to the filing of the Complaint, made no claim of a legitimate interest over the disputed domain name, apart from trying to recover his costs in acquiring the disputed domain name;
(iv) the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark;
(v) the Respondent is using the disputed domain name to redirect Internet users to a website featuring PPC advertisements, some of which directly compete with the Complainant`s business;
(vi) the disputed domain name is being offered for sale for USD 3,000 an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name, which further indicates the Respondent’s lack of rights or legitimate interests.
Moreover, the Complainant asserts that the registration of the disputed domain name was done clearly in bad faith given that PETPLAN is known internationally, having the Complainant marketed and sold its goods and services under this trademark since 1997, which significantly predates the Respondent’s registration of the disputed domain name which only took place in May 2018.
Furthermore, the Complainant contends that its trademark is a well-known trademark and, as such, the Respondent knew or should have known of the Complainant’s trademark, and furthermore, the registration of the disputed domain name containing a well-known trademark should constitute bad faith per se.
In addition to that, the Complainant asserts that the Respondent is earning from PPC advertisements which clearly target the Complainant’s business, which further indicates the Respondent’s bad faith registration and use of the disputed domain name. Also according to the Complainant, it attempted three times to contact the Respondent, having sent three warning letters, the first on June 13, 2018 but only on July 5, 2018 the Respondent initiated an email exchange with the Complainant’s representative where he repeatedly stated that he would only agree to the transfer of the disputed domain name in exchange for monetary compensation (Annex 7 to the Complaint), which indicates that the Respondent only registered the disputed domain name because he was targeting the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has established rights in the PETPLAN trademark duly registered.
The Panel finds that the disputed domain name <petplan.app> merely reproduces the Complainant’s PETPLAN trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Moreover, the Respondent has not claimed any rights to or legitimate interests in the disputed domain name nor has rebutted the Complainant’s allegation that he has registered the disputed domain name deliberately and so as to capitalize on the Complainant’s reputation. In the communications exchanged between the Parties prior to this procedure, the Respondent offered the disputed domain name for USD 2,200 in his last email to the Complainant's representative (Annex 7 to the Complaint) and previously for USD 3,000 on the webpage to which the disputed domain name resolved (Annex 3 to the Complaint).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, (i) the offer for sale for USD 2,200 and USD 3,000 of the disputed domain name by the Respondent to the Complainant (Annexes 3 and 7 to the Complaint), (ii) the use of the disputed domain name in connection with a parked PPC website and (iii) the Respondent’s choice to retain a privacy protection service so as to conceal his true identity corroborate a finding of bad faith in the registration and use of the disputed domain name.
Also, as already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.
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 <petplan.app> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 5, 2018
