The pet insurance company PETPLAN has just lost a domain name complaint even though the respondent said he was no longer interested in the domain name, and filed no response. How did this come about?
Pet Plan Ltd of Guildford, filed a Complaint under ICANN’S Universal Dispute Resolution Service (UDRP) with the World Intellectual Property Office (WIPO) about the disputed domain name (portopetplan.com) registered through a privacy service by Augusto Valent of Sao Paulo, Brazil. Pet Plan is part of Allianz Global Group, one of the world’s foremost financial and insurance services providers. It owns numerous trade mark registrations for its trade mark PETPLAN including in Brazil. The disputed domain name resolved to what appeared to be a blog in Portuguese related to animal care.
The Respondent did not reply formally to the Complaint, but he sent an email to WIPO in which he indicated he may no longer be interested in the disputed domain name, whereupon Pet Plan asked for proceedings to be suspended to discuss possible settlement. This presumably came to nothing because Pet Plan subsequently asked for the proceedings to be resumed.
Pet Plan gave evidence that they provide pet insurance services for domestic and exotic pets not only in the United Kingdom but around the globe and that they own a substantial number of trade mark registrations for the PETPLAN name, including a registration in Brazil. They argued that the term “petplan” is not a common shortening for the term “pet insurance plan” and that the disputed domain name contained their trade mark in its entirety, along with the word “porto” which means “harbour” or “haven” in Portuguese.
They argued that the Respondent was not making a bona fide offering of goods or services, or legitimate, non-commercial fair use of the disputed domain name (which might enable the respondent to prove he did have a legitimate interest in the domain name). They claimed the domain name simply directed visitors to a minimally active website which was last updated in 2012, which featured various articles related to domesticated animals. They said it is significant that the entire content of the website to which the disputed domain name resolved is in Portuguese, except for the reference to their trade mark, PETPLAN.
Complainants must prove that a disputed domain name was originally registered in bad faith as well as being used in bad faith. Pet Plan argued that the disputed domain name was registered and being used in bad faith because the Respondent registered it years after they had filed applications to register their PETPLAN trade mark, and after they had registered the domain name <petplan.co.uk> in 1996. In short, they said, bad faith was demonstrated by the fact that the Respondent registered the disputed domain name after the PETPLAN trade mark had become famous and well known; it was also significant that the only English words found in the content of the website are “pet” and “plan“; that the Respondent had employed a privacy service to hide his identity and had ignored their attempts to resolve this dispute outside of the complaint proceedings (but they did not specify what those attempts may have been).
The Respondent did not formally reply to these contentions but sent an email to WIPO in which he explained that the domain name pointed to a blog he had created around 2011 and 2012, which had not been in use since. He also added that he “may no longer be interested” in the disputed domain name. As the Respondent did not formally reply to Pet Plan’s assertions, it was open to the Panel to accept their “reasonable contentions” as true. Even so, the Panel had to decide whether these undisputed claims did provide sufficient grounds on which to order the transfer of the disputed domain name. (A complaint does not succeed simply because no response is filed, the complainant must prove that the facts relied upon and the respondent’s actions justify transfer or cancellation of the disputed domain name).
Pet Plan, as the Complainant, therefore needed to prove four things:
- the disputed domain name is identical or confusingly similar to a trade mark in which they held rights; and
- the respondent had no rights or legitimate interest in the domain name; and
- the disputed domain name had been registered in bad faith and
- it was being used in bad faith.
All four elements had to be proved. (And it is here that many uncontested complaints actually fail).
Pet Plan had provided evidence that they owned the PETPLAN trade mark and the Panel held that the disputed domain name <portopetplan.com> is confusingly similar to the trade mark PETPLAN, which is completely contained within it (the inclusion of the descriptive Portuguese word “porto” was not sufficient to differentiate it).
Pet Plan had argued that its trade mark PETPLAN is well known in the pet insurance industry, and had filed evidence which had not been disputed by the Respondent to this effect. Although the Respondent had said that the disputed domain name had pointed to a website containing a blog relating to domestic animals (which might in other circumstances have helped his case), he had not filed a formal response. The Panel said Pet Plan had established a prima facie case that the Respondent had no rights to, or legitimate interests in the disputed domain name. This shifted the burden of proof to the Respondent, who by not having filed a response had not rebutted any such claims, so the second element of the Policy had been fulfilled, namely it was established that the Respondent did have no rights or legitimate interest in the domain name.
On the question of bad faith, Pet Plan had argued that out of the entire content of the Respondent’s website, the only words in the English language consisted of the PETPLAN trade mark, and submitted printouts of the web site to support this. The Panel dismissed this because the only use of the term PETPLAN on the website was as part of the disputed domain name itself (which had been reproduced as part of the banner to the website). Moreover, the various printouts which Pet Plan had filed to support their case tended to support and thereby validate the Respondent’s informal statement that he had used the disputed domain name to point to a blog featuring various articles related to domesticated animals.
Pet Plan then argued the Respondent “must have been aware of the existence” of their numerous trade mark registrations when registering the disputed domain name, or at least would have come upon the trade mark through an internet search. However, the Panel took the view that the Respondent seemed to have been using “Porto Pet Plan” as a descriptive title for his blog, and did not appear to be trying to make any money from any link to the PETPLAN trade mark. Therefore, in the absence of any firm evidence showing he did have actual knowledge of Pet Plan’s trade mark registrations prior to registering his domain name, the mere existence of those trade mark registrations was not sufficient to establish bad faith registration under the Policy. It had previously been held in other cases that “constructive notice” (namely the mere existence of trade mark registrations) is not sufficient to prove someone had sufficient knowledge of them for the purpose of proving bad faith under the UDRP Policy. The Panel therefore concluded that Pet Plan had failed to meet its burden of proving bad faith registration and bad faith use of the disputed domain name. The case was dismissed.
A major difficulty faced by complainants under UDRP is the need to prove not only that a respondent has no legitimate interest in a domain name but that it was originally registered in bad faith. Pet Plan tried unsuccessfully to do this by arguing that they owned numerous trade mark registrations including one in Brazil and that the respondent “must have been aware of the existence” of their trade mark through internet searches but WIPO Panels had previously dismissed the argument that there has been “constructive notice” in this way. A complainant must do more than make unsubstantiated allegations. One way forward could have been to show that they had been actively marketing the PETPLAN trade mark in Brazil (where the Respondent was based), before the disputed domain name had been registered. The Panel could then have been invited to draw an appropriate connection between marketing and advertising activity and subsequent registration of that domain name. An alternative could have been to explain precisely what attempts had been made to resolve the dispute and why this was relevant. By way of one example, bad faith may be established by submitting evidence from which the Panel may infer a domain name was registered for the purpose of selling it back to the trade mark owner for an excessive sum. Neither of these issues was explicitly addressed and on the facts presented in evidence the Panel had no option but to hold that the allegation of bad faith had not been proved.
Eric Ramage is a Fellow of The Chartered Institute of Trade Mark Attorneys, and has a Higher Courts Litigation Certificate from the Intellectual Property Regulation Board. He has substantial experience of internet issues dating back to 1999 when he was invited to serve on the Policy Advisory Board of the UK domain name registry Nominet, of which he was Chair between 2006 and 2010. He routinely lectures on domain name recovery.
If you aren’t receiving our legal updates directly to your mailbox, please sign up now
Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.
Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.