Pret dot .APP #UDRP : You snooze, you lose says #WIPO panelist!

The registrant of the domain Pret.app just won the UDRP dispute that was filed by the holder of 480 trademarks, Pret A Manger (Europe) Limited of London, United Kingdom.

The word “pret” means “ready” in French, and the Respondent denied it registered the domain in bad faith. Instead, they pointed out to their entrepreneurial status and successful history:

“The Respondent outlines and provides links attesting to his success as a young entrepreneur including the The Student Job Ltd (“www.thestudentjob.com”), and Urban Massage Ltd (“www.urbanmassage.com”), which is operational in the United Kingdom, and in France as Urban Massage France SARL. The Urban Massage venture has raised over EUR 13.5 million of venture capital from sources including the European Investment Fund and the London Co-investment Fund, supported by the Mayor of London.”

The WIPO panelist made an interesting statement, when they acknowledged the Complainant’s 480 trademarks globally: they essentially told them they failed to secure the domain while they had the opportunity to do so.

“The Complainant has sought to protect its trademark with around 480 registrations in numerous different countries. Clearly the Complainant is conscious of the value of its trademark. The Complainant launched its app in December 2017, after presumably a period of design, development, and testing. There is no evidence the Complainant took any pre-emptive steps to secure the disputed domain name in the “.app” gTLD during any pre-registration period, or availed itself of the Sunrise process for trademark holders, and the Panel cannot wind back the clock.”

This seems to be a first, as the panelist’s argument is quite often used by Respondents and that type of defense usually fails.

Full details of the decision on the Pret.app dispute follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pret A Manger (Europe) Limited v. Jack Tang
Case No. D2018-2059

1. The Parties

The Complainant is Pret A Manger (Europe) Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stevens and Bolton LLP, United Kingdom.

The Respondent is Jack Tang of London, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <pret.app> is registered with united-domains AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 11, 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 amendment to the Complaint on September 12, 2018.

The Center verified that the Complaint together with the amendment to the 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 September 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2018. Upon request of the Respondent, the due date for Response was extended to October 21, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on October 20, 2018.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 26, 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 factual background is taken from the Complaint and the Response respectively.

The Complainant, founded in London in 1984, commonly known as “Pret”, operates cafes and sells food and drinks world-wide. The scale of the Complainant is reflected in having 500 stores and sales of GBP 776 million in 2016. The Complainant holds about 480 trademarks, mostly registered but including trademark applications, for variously PRET, PRET A MANGER, and other variants, with or without a device, of which the following are representative:

PRET, United Kingdom Intellectual Property Office, registered January 27, 2017, registration number 3195778, in classes 9, 29, 30, 31, 32, 33, 39, 42, 43;

PRET, United States Patent and Trademark Office (“USPTO”), registered October 8, 2002, registration number 2632138, in classes 29, 30, 32;

PRET, USPTO, registered October 7, 2003, registration number 2770792, in classes 35, 39, 43.

The Complainant also holds a number of domain names including <pret.co.uk>, <pret.com>, <pret.cn>, <pret.hk>, <pret.ae>, <pret.sg>, and <pret.dk>.

In December 2017 the Complainant launched an app for smart phones and tablets in the United States of America (“United States”).

The Respondent is an Internet entrepreneur. In about 2011 he founded The Student Job Ltd, enabling students to find work. In 2014 he founded Urban Massage Ltd, enabling direct contact between practitioners and clients, employing over 60 employees in London and Paris in partnership with over 3,500 wellness professionals.

5. Parties’ Contentions

A. Complainant

The Complainant says it has rights in the trademark PRET. It’s app, designed for use with smart phones and tablets, is available from the App Store and Google Play. The disputed domain name, disregarding the generic Top-Level Domain (gTLD) “.app”, is identical to the Complainant’s trademark.

The Complainant says the Respondent has no rights or legitimate interests in respect of the disputed domain name. There has been no bona fide use of the disputed domain name because it does not resolve to a website. There is no evidence of demonstrable preparations for the use of the disputed domain name before notice of the dispute, or that it is a name by which the Respondent has been commonly known, or that there has been any legitimate noncommercial or fair use.

The Complainant says the disputed domain name was registered and is being used in bad faith. It would be desirable for the Complainant to host its app with a “.app” domain but the disputed domain name was registered by the Respondent on the day the “.app” gTLD was publicly launched. The Respondent’s intention must be to block the Complainant from using the disputed domain name, or to force the Complainant to buy it from the Respondent.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

The Respondent outlines and provides links attesting to his success as a young entrepreneur including the The Student Job Ltd (“www.thestudentjob.com”), and Urban Massage Ltd (“www.urbanmassage.com”), which is operational in the United Kingdom, and in France as Urban Massage France SARL. The Urban Massage venture has raised over EUR 13.5 million of venture capital from sources including the European Investment Fund and the London Co-investment Fund, supported by the Mayor of London.

In terms of rights and legitimate interests, the Respondent says he pre-registered the disputed domain name on November 1, 2016. The registration was confirmed by united-domains AG on April 9, 2018, and was registered on May 8, 2018.

The Respondent says his pre-registration was in order to launch a French website to help students in France find work opportunities. The Respondent has appended web design plans for the purpose.

The Respondent says the French word “pret” is a dictionary term meaning “ready”.

The Respondent submits that at the pre-registration stage of the disputed domain name, conflict with any trademark should have prevented full registration. The Complainant has not registered a French trademark for PRET alone, only in combination, which the Respondent assumes to mean that PRET, being apparently generic, was not acceptable as a French trademark.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The gTLD designation “.app” may be disregarded in the determination of confusing similarity. The disputed domain name <pret.app> is found to be effectively identical to the Complainant’s trademark PRET. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Whilst the onus of proof rests with the Complainant, it is conventional for the Complainant to state a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent may then seek to rebut with evidence.

Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

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

(iii) you are 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”.

The Respondent submits in the terms of paragraph 4(c)(i) of the Policy that he has made demonstrable preparations to use the disputed domain name. The intention is to launch an app for “helping students in France to be connected with work opportunities – opportunities that will help them to be ready/well equipped for their future career/endeavors”. In support of this claim the Respondent has annexed 16 screen prints of dummy pages, some of them duplicated, showing the proposed app in development phase with pages for applicants and employers to provide their details. The pages are populated with generic photos of applicants and job providers and the text is largely standard printers’ trial layout text (“Lorem ipsum…”).

In order for there to be use or demonstrable preparations for use of the disputed domain name in the terms of paragraph 4(c)(i) of the Policy, there must be freedom from registration or intended use in bad faith. There is no proof that the Respondent’s mock up of the intended app was produced before any notice of the dispute, and it is noted the Respondent asked for extra time to submit the Response. There are idiosyncratic references to job availability “within 5 miles of Paris”, France being a country that uses (and devised) the kilometre and does not use miles.

Much therefore hinges on the general credibility of the Respondent.

The Respondent has submitted reference to an article in Metro online news magazine of February 12, 2012 (“www.metro.co.uk”) titled “Students set up website to help young people find work during their studies”. The article names and has a photograph of the Respondent and two colleagues and makes positive references to the website having 10,000 members, having found 600 jobs, and to it “helping to fill 2,000 hospitality jobs at the London Olympics and 300 jobs at the Brit Awards”.

A detailed article on the entrepreneurship website YHP of December 21, 2011 (“www.yhponline.com”), titled “[Interview] I’m using my time at university as an incubator to develop my business – Jack Tang of TheStudentjob”, runs to some 1600 words.

The Respondent has also provided a link to an article about his previous website, published online in City A.M. of July 16, 2018 (“www.cityam.com”) titled “The co-founder of Urban Massage on the gig economy and disrupting the spa industry”.

The Telegraph in its Small Business section of September 10, 2018 (“www.telegraph.co.uk”), titled “How to make a start-up tick the second time around”, devoted four of its paragraphs to the Respondent

Techcrunch (“www.techcrunch.com”) has an article of apparent date October 6, 2014, about the Respondent titled “Urban Massage Lands On iOS As Same-Hour Massage Booking Becomes A Thing — Apparently”, with positive references to the Respondent’s new model of massage provision and commenting on “£60,000 worth of bookings processed to date — all while in Beta and sans-native mobile app”.

Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.

The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.

On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture. Nevertheless, in the event the registration and use of the disputed domain name can be shown to have been in bad faith, the Respondent would not qualify as having rights or legitimate interests under paragraph 4(c)(i) of the Policy. The question of bad faith will be considered before returning to rights or legitimate interests.
C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case, however, paragraph 4(b)(iv) of the Policy is pertinent.

The Complainant says it would be desirable to be able to host its new app at the disputed domain name, and that the Respondent’s intention must be to block the Complainant from using it or to sell it to the Complainant. The Complainant has not, however, produced any significant evidence addressing bad faith.

Thus, there is no evidence, such as the disputed domain name being offered for sale, that could support a finding for the Complainant under paragraph 4(b)(i) of the Policy, or of the Respondent having engaged in a pattern of blocking registrations under paragraph 4(b)(ii) of the Policy, or evidence of the Respondent having any intention to disrupt the Complainant’s business under paragraph 4(b)(iii) of the Policy.

In order for the Complainant to succeed under paragraph 4(b)(iv) of the Policy it would be necessary for the Respondent to have intended to target specifically the Complainant’s trademark for commercial gain.

The word “prêt” in French means “ready” in English. “Prêt” is a common dictionary word. The Complainant’s registration of PRET as a trademark does not create a monopoly over the use of the word. In the exercise of its power, whilst acting neutrally, to undertake limited enquiries of public records (section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), the Panel has viewed the results of a search of the USPTO for trademarks comprising or incorporating PRET or PRÊT. The raw search returned 152 results including trademarks variously registered, applied for, live or dead. Of these, 52 were both registered and live. A number of these belong to the Complainant. A number do not. A selection of trademarks belonging to registrants other than the Complainant includes:

PRET, belonging to Shanghai PRET Composites Co., Ltd., China;
PRET, belonging to Pret, Inc. Corporation Delaware, United States;
PRET-A-FLEUR, belonging to Affordable Luxury NY, Inc., United States;
PRETTODAY, belonging to Jinan Minxing E-Commerce Co., Ltd., China;
PRET-A-PLAY, belonging to TWOODIE PBC Public Benefit Corporation Delaware, United States;
PRÊT-A-PORTER, belonging to Sandra Luz Carretero Vazquez, individual, United States;
PRÊT-À-PORTEUR, belonging to Grimaldi Industri AB Corporation Sweden;
PRET-A-MARIER, belonging to Pret A Marier LLC Limited Liability Company New York, United States;
PRÊT-À-VOLUME, belonging to Bora Creations S.L. (Sociedad de responsabilidad limitada), Spain;
PRET-A-SURF, belonging to Mod, Inc. Corporation Delaware, United States.

There are more. The trademark PRET, alone or in combination, does not uniquely identify the Complainant and nothing in the Complaint would support an assertion that the Respondent, whose field of business is unrelated to the Complainant’s, has intended to target the Complainant’s trademark. The Panel finds no evidence in the record before it that the disputed domain name was registered or is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Reverting to the question of rights or legitimate interests, in the absence of registration or use in bad faith, the Panel finds that the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

The Complainant has sought to protect its trademark with around 480 registrations in numerous different countries. Clearly the Complainant is conscious of the value of its trademark. The Complainant launched its app in December 2017, after presumably a period of design, development, and testing. There is no evidence the Complainant took any pre-emptive steps to secure the disputed domain name in the “.app” gTLD during any pre-registration period, or availed itself of the Sunrise process for trademark holders, and the Panel cannot wind back the clock. In any event, while the Complainant may have a claim if subsequent evidence comes to its attention that casts a different light on the Respondent’s motives, it has not met its burden on the present record.

7. Decision

For the foregoing reasons, the Complaint is denied.

Dr. Clive N.A. Trotman
Sole Panelist
Date: November 5, 2018

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