WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pret A Manger (Europe) Limited v. Alexander Young

Case No. D2020-0207

1. The Parties

The Complainant is Pret A Manger (Europe) Limited, United Kingdom (“UK”), represented by Stevens & Bolton LLP, UK.

The Respondent is Alexander Young, UK.

2. The Domain Name and Registrar

The disputed domain name <veggiepret.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 January 27, 2020. On January 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2020, 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 January 30, 2020, 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 January 30, 2020.

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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.

The Center appointed Michael D. Cover as the sole panelist in this matter on February 26, 2020. 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 was incorporated on October 10, 1984. The Complainant has a chain of cafes and sandwich shops around the world, with the first one opening in London, UK, in 1986. The Complainant opened its first shop in the United States of America in 2000 and shops in France, China, Dubai, Singapore, and the Netherlands followed. In 2017, the Complainant had annual sales of GBP 878 million.

The Complainant owns registered trademarks in the UK and internationally for the word PRET and PRET A MANGER (e.g., UK Registration No. 2022695, registered on November 19, 1999). The Complainant also is the proprietor of UK registered trademark No. 3,186,855 VEGGIE PRET, filed on September 21, 2016, and registered on January 6, 2017. The Complainant also owns and used a number of domain names, which include the word “pret”, including <pret.co.uk>,<pret.com>, and <pret.ac>.

The Complainant first publicized its intention to open a PRET shop selling entirely vegetarian food under the mark VEGGIE PRET in July 2015. This was on social media and the Complainant opened the first VEGGIE PRET as a pop-up shop in Soho, London on June 1, 2016. As a result of its success, VEGGIE PRET was made permanent and there are now six VEGGIE PRET shops in London and one in Manchester in the UK. The Complainant has advertised VEGGIE PRET widely on social media and examples of the coverage are at Annex 6 to the Complaint.

The Disputed Domain Name was registered on September 6, 2016. There is currently no active website being operated under the Disputed Domain Name. According to the Complaint, the Disputed Domain Name used to resolve to the Registrar’s parking page including pay-per-click links related to the Complainant.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar to a trademark in which the Complainant has rights

The Complainant references its registered trademarks and use of PRET and VEGGIE PRET and submits that it has significant registered and unregistered rights in the names PRET and VEGGIE PRET. It goes on to submit that the relevant part of the Disputed Domain Name is identical and an exact match for the Complainant’s trademark VEGGIE PRET and similar to and incorporates the entirety of the Complainant’s well-known PRET trademark and that the addition of the element “veggie” connotes vegetarian food provided by the Complainant.

The Complainant concludes that its trademarks PRET and VEGGIE PRET have the reputation as set out and that the Respondent has no reasonable justification for having registered the Disputed Domain Name.

Rights or Legitimate Interests

The Complainant sets out the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant notes that the Respondent is not operating a website at the Disputed Domain Name and so has not made any bona fide or legitimate noncommercial use of the Disputed Domain Name. The Complainant notes that the Disputed Domain Name is not currently hosting an active website and only produces the Registrar’s parked domain message (Annex 8 to the Complaint). The Complainant goes on to state that it is not aware of any other use of the Disputed Domain Name by the Respondent.

The Complainant sets out that it is aware of no evidence that, before any notice to the Respondent of the dispute, there was any evidence of the Respondent’s use of or demonstrable preparation to use a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or that the Respondent had been commonly known by the Disputed Domain Name; or that the Respondent was making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s marks.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name was registered in bad faith. The Complainant notes that the Disputed Domain Name was registered on September 6, 2016, and that this was the exact date that the Complainant announced that its VEGGIE PRET brand would be a permanent fixture.

The Complainant also notes that the Disputed Domain Name was registered on the same day as another domain name, <veggiepret.co.uk>, again by an anonymous registrant, in respect of which the Complainant has brought a separate complaint with Nominet. The Complainant submits that it is clear that this domain name was registered by the same person as the Disputed Domain Name and that that person was most likely based in the UK and fully aware of the Complainant’s rights and reputation. Given the strength of the Complainant’s rights in the names PRET and VEGGIE PRETT, submits the Complainant, it was plainly the Respondent’s intention to block the Complainant from using the Disputed Domain Name and/or offering it for sale to the Complainant in the future.

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

The Panel accepts that the Complainant has established registered rights in its PRET and VEGGIE PRET trademarks. Extensive use has been made of the PRET trademark since 1984 and the VEGGIE PRET trademark since 2016. The Panel accepts the submission of the Complainant that, as a result, the Complainant’s trademark PRET trademark has become a well-known trademark.

The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights. The Disputed Domain Name incorporates the Complainant’s well-known trademark PRET in full, with the addition of the non-distinctive element “veggie”. It is well-established that that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not avoid a finding that a disputed domain name is confusingly similar to a complainant’s trademark. It is also well-established that the addition of non-distinctive terms, such as “veggie”, as here, does not avoid a finding of confusing similarity. The Panel also accepts that, with the exception of the addition of the gTLD “.com”, the Disputed Domain Name is identical to the Complainant’s registered trademark VEGGIE PRET.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks PRET and VEGGIE PRET, in which the Complainant has rights, and that the provisions of paragraph 4(a)(i) of the Policy have 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 evidence before the Panel to indicate that the Complainant has licensed or authorized the Respondent to use the PRET or VEGGIE PRET trademarks. The Panel decides that the burden then passes to the Respondent, the Complainant having made out a prima facie case.

The Respondent has failed to satisfy the burden, which has passed to the Respondent, who has chosen not to respond, despite having been given the opportunity so to do. The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly known by the Disputed Domain Name, nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the PRET or VEGGIE PRET trademarks of the Complainant.

The Panel therefore accordingly finds that the provisions of paragraph 4(a)(ii) of the Policy have 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 considers reasonable to infer that the Respondent had knowledge of the Complainant and/or its nascent rights in the trademark VEGGIE PRET, and probably that the Disputed Domain Name has been registered in anticipation of trademark rights of the Complainant, as the Complainant has provided evidence of media attention for “Veggie Pret” (e.g., in connection with the product/service launch), a pop-up shop under the brand “Veggie Pret” was open in the UK before the registration of the Disputed Domain Name, and the Respondent is located in the UK.

The Panel finds that the above circumstances have been established here by the Complainant. This is a reasonable inference from the evidence before the Panel, which has also accepted that the Complainant’s trademark PRET is well known. This is also a reasonable inference from the Disputed Domain Name resolving to a parking website and also from the concurrent registration of “.com” and “.uk” domain names at the same time by anonymous registrants, who may well have been the same person. The Disputed Domain Name resolves to the Registrar’s parking page that contains pay-per-click links related to the Complainant. Accordingly, it is unlikely that the Respondent was not aware of the Complainant’s PRET and/or VEGGIE PRET trademarks at the time of the registration; and the Respondent apparently attempts to attract Internet users to its website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s PRET and VEGGIE PRET trademarks for the purpose of commercial gain. The Panel further finds that the failure of the Respondent to submit a Response and hence provide any evidence of actual or contemplated good faith use, and the concealment of the Respondent’s identity is further evidence of bad faith.

The Panel therefore finds that the provisions of paragraph 4(a)(iii) of the Policy have 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 <veggiepret.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: February 28, 2020