WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grosvenor Group Limited v. Abhishek Jain, Grosvenor Property Developers Ltd

Case No. D2018-1759

1. The Parties

The Complainant is Grosvenor Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Marks & Clerk Solicitors, United Kingdom.

The Respondent is Abhishek Jain, Grosvenor Property Developers Ltd of Harrow, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <grosvenordevelopers.com> (the “Disputed 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 August 2, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 6, 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 7, 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 10, 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 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2018.

The Center appointed Michael D. Cover as the sole panelist in this matter on September 17, 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 is an English company and is part of the privately-owned Grosvenor Group, which is a major international property and investment group. Another company that is part of the Grosvenor Group is another English company, Grosvenor Developments Limited.

The Complainant is the proprietor of various European Union (EU) Registered Trade Marks for GROSVENOR, the earliest of which was registered with an effective date of April 18, 1996. These trade marks are registered for inter alia real estate and property development services.

The origins of the Grosvenor Group go back to the 17th century and the development in the 18th century of what is now known as Mayfair in London. More recently, in the second half of the 20th century, the Grosvenor Group has applied its property skills to real estate and development on an international basis. The Complainant has traded from a website, “www.grosvenor.com”, since 2002.

All that is known about the Respondent is that the registrant of the Disputed Domain Name is Abhishek Jain of Grosvenor Property Developers Limited. The Respondent is an English private company and was registered on December 16, 2016, with company number 10528987, with the Nature of Business described as “Buying and selling of own real estate”. This company’s next accounts are shown on the record at Companies House in the United Kingdom as being overdue as at September 16, 2018.

The Disputed Domain Name was registered on December 24, 2016 and resolves to a website of the Respondent which offers services relating to residential property and student accommodation.

The Complainant, through its representatives, sent a cease and desist letter to the Respondent in respect of the Disputed Domain Name on December 4, 2017 but no response was received.

5. Parties’ Contentions

A. Complainant

Confusingly Similar to a Trademark in which the Complainant has Rights

The Complainant submits that, through its long-standing and extensive use of its GROSVENOR trademarks in the UK and EU, it has established substantial registered rights in those trademarks and also substantial reputation in the business carried out under those trademarks.

The Complainant also submits that the Disputed Domain Name consists of two words, “grosvenor” and “developers”, and that the word “developers” is entirely descriptive of the services purported offered by the Respondent. In fact, says the Complainant, the distinctive element of the Disputed Domain Name is the word “grosvenor”, which is identical to the Complainant’s trademark, in which it has rights and which, because of its extensive use, enjoys enhanced distinctiveness.

The Complainant draws the Panel’s attention to two instances of what it describes as actual confusion, where, it says, members of the public were confused into putting deposits on properties as a result of going on to the Respondent’s website to which the Disputed Domain Name resolved.

The Complainant concludes that the Disputed Domain Name is identical or confusingly similar its GROSVENOR trademarks.

Rights or Legitimate Interests

The Complainant notes that the Respondent was incorporated on December 16, 2016 and that the Disputed Domain Name was registered on December 24, 2016. The Complainant submits that the Respondent could have no legitimate interests in using the Disputed Domain Name, which wholly incorporates the Complainant’s trademark GROSVENOR, which is used for identical services by the Respondent and which has become synonymous with the Complainant as a result of longstanding use.

The Complainant concludes that the Respondent’s offering is not bona fide nor is the Respondent making legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant states that the Respondent is using the Disputed Domain Name to mislead consumers, to tarnish the Complainant’s trademarks and/or to take advantage of the reputation of the Complainant’s GROSVENOR trademarks.

Registered and Used in Bad Faith

The Complainant notes that the Respondent had ample opportunity to cease what the Complainant describes as the Respondent’s infringing activities following the cease and desist letter in December 2017. The Complainant claims that this indicates that the Respondent is carrying on its use of the Disputed Domain Name is bad faith. The Complainant also submits that the registration of the Disputed Domain Name was one of a number of multiple steps to misrepresent itself as a member of the Complainant’s Grosvenor Group.

The Complainant also submits that the various activities of the Respondent are extremely damaging to the Complainant and solidifies the Complainant’s position that the Disputed Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar to a Trademark in which the Complainant has Rights

The Panel accepts that the Complainant has established both registered and common law rights in its trademark GROSVENOR. The Complainant owns registered trademarks for GROSVENOR as an EU trademark, the most senior of which dates back to 1996, which is 20 years before the registration of the Disputed Domain Name. The use of GROSVENOR over so many years will have built up substantial goodwill and reputation in the business conducted under the trademark GROSVENOR and the resulting common law rights.

The Panel accepts that the Disputed Domain Name is confusingly similar to the trademark GROSVENOR, in which the Complainant has rights. The Disputed Domain Name reproduces the Complainant’s trademark GROSVENOR in its entirety.

The Panel also accepts that the addition of a dictionary term, such as “developers” and a gTLD, such as “.com”, is not sufficient to avoid a finding that the Disputed Domain Name is confusingly similar to the trademark GROSVENOR. The conclusion of confusing similarity is reinforced by the two instances of actual confusion cited by the Complainant.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark GROSVENOR, in which it has rights, and that paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no suggestion or evidence that the Complainant has authorized or licensed the Respondent to use its GROSVENOR trademark; the original use of that trademark and even the more recent registered GROSVENOR trademarks predate the registration of the Disputed Domain Name by many and a considerable number of years respectively.

Further, it is a reasonable inference that the Respondent was aware of the Complainant’s GROSVENOR trademark when the Disputed Domain Name was registered. Such use as has taken place of the Disputed Domain Name, the Panel accepts was not legitimate noncommercial or fair use of the Disputed Domain Name and had the effect and the intention, in which it succeeded, misleadingly to divert consumers and to tarnish the GROSVENOR trademark of the Complainant.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel finds, on the evidence and on the balance of probabilities, that the Respondent, by using the Disputed Domain Name in the way described in this Decision has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s GROSVENOR trademark as to the source, sponsorship, affiliation or endorsement of that website. The Panel also finds, on the evidence and on the balance of probabilities, that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business. The Panel has already found that it is a reasonable inference that the Respondent was aware of the Complainant’s GROSVENOR trademark when registering the Dispute Domain Name.

The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met.

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, <grosvenordevelopers.com>, be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: September 26, 2018