WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pret A Manger (Europe) Limited v. Prettogo LLC

Case No. D2018-0782

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 Clyde & Co., United Arab Emirates.

The Respondent is Prettogo LLC of Dubai, United Arab Emirates, represented by Sagar Chandra & Associates, India.

2. The Domain Name and Registrar

The disputed domain name <prettogo.com> (“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 April 9, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 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 April 12, 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 April 15, 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 April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2018. The Response was filed with the Center on May 11, 2018.

The Center appointed John Swinson as the sole panelist in this matter on May 18, 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 Pret A Manger (Europe) Limited of the United Kingdom. The Complainant is an international sandwich shop and café chain which specialises in ready-to-eat sandwiches and salads, and various other ready-to-go food and beverages.

According to the Complaint, the Complainant operates 400 outlets worldwide under the brand PRET and PRET A MANGER, and has done so since 1986. Jurisdictions in which the Complainant operates include the United Kingdom, Europe, the United States of America, the United Arab Emirates (“UAE”) and various parts of Asia.

The Complainant owns a significant number of registered trade marks in various jurisdictions for PRET (the “Trade Mark”) (see e.g., United States trade mark registration no. 2770792 for PRET, registered October 7, 2003). The Complainant owns other registered trade marks which incorporate this term. In total, the Complainant holds over 650 trade mark registrations and approximately 200 pending trade mark applications worldwide.

The Respondent is Create Café LLC (formerly known as Pret to Go LLC). According to the Response, the Respondent is an international company engaged in providing retail goods and services with respect to food, beverages, cafeteria, canteen and restaurant services, self-service restaurants, snack-bar services, food and beverage catering. The Panel notes that the registrant of the Disputed Domain Name as confirmed by the Registrar is Prettogo LLC.

The Respondent is based in the UAE and operates several stores, cafes and restaurants providing its food and beverages services. According to the Response, the Respondent provides both physical stores and online food ordering services. The Respondent has registered trade marks and pending trade mark applications for PRET TO GO in a number of jurisdictions including India, Saudi Arabia, Lebanon and the UAE (see e.g., India trade mark registration no. 3247205 for PRET TO GO, registered April 30, 2016). A number of the pending trade mark applications have been opposed by the Complainant.

The Respondent registered the Disputed Domain Name on December 8, 2014. The website at the Disputed Domain Name advertises the Respondent’s food and beverage goods and services for sale.

Court Proceedings

Over the last few years, the Complainant and the Respondent have been involved in a number of court proceedings related to the Respondent’s registration and use of the trade mark PRET TO GO in the UAE. In 2016, the Complainant brought proceedings against the Respondent in the Dubai Courts for trade mark infringement in the UAE. The Dubai Courts found that the Respondent’s use of the term “pret” in its trade name, in relation to its products or services, and in the Disputed Domain Name infringes the Complainant’s Trade Mark, and ordered that the Respondent could no longer use this term in the UAE. The Panel understands that this decision is final and cannot be appealed.

There are also proceedings in the Federal Court of the UAE relating to the registration of the Respondent’s trade mark, which the Complainant has opposed. The Respondent’s trade mark has been registered, and this registration has been approved by the Federal Court of First Instance and the Federal Court of Appeal. The Panel understands that the Complainant has filed a final appeal against this decision which has not yet been heard.

Each of the Parties has made submissions regarding the jurisdiction and authority of the Dubai Courts versus the Federal Courts of the UAE. These submissions are largely conflicting.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name contains the Complainant’s Trade Mark in its entirety. The other elements of the Disputed Domain Name, being the words “to go”, are generic when used in relation to the type of services advertised on the website at the Disputed Domain Name.

The Disputed Domain Name is confusingly similar to the Trade Mark as the Disputed Domain Name is being used in relation to a sandwich shop located in the UAE providing the same goods and services as the Complainant. There is clearly a high level of similarity between the Complainant’s Trade Mark and the Disputed Domain Name which is likely to give rise to confusion.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Respondent is no longer using the Trade Mark in any way, other than in the Disputed Domain Name. The Dubai Court of Cassation found that the Respondent’s use of the Trade Mark infringes the Complainant’s Trade Mark and amounts to unfair competition. The Respondent is precluded from using the Trade Mark in the UAE and therefore the Respondent is operating unbranded outlets and selling unbranded products. The Respondent cannot have a legitimate interest in a Trade Mark which it does not use and is precluded from using in the UAE.

The Respondent is using the Disputed Domain Name intentionally to make a commercial gain by misleading consumers into thinking that the goods and services offered by the Respondent are associated with the Complainant. Due to the high level of similarity between the Trade Mark and the Disputed Domain Name it is inevitable that customers will mistakenly believe that any services provided or advertised on the website at the Disputed Domain Name are provided or advertised by the Complainant.

Bad Faith

The Respondent has registered and is using the Disputed Domain Name in bad faith. The Respondent’s trade mark PRET TO GO is confusingly similar to the Complainant’s Trade Mark. The Respondent intentionally selected the Disputed Domain Name due to its high level of similarity with the Trade Mark in order to confuse consumers into believing that the Respondent’s website, and the goods and services offered by the Respondent, are in some way affiliated with the Complainant.

As part of the judgment against the Respondent, the Dubai Court of Cassation blocked access to the Respondent’s Disputed Domain Name. The Respondent has sought to circumvent the block on the website which was ordered by the Dubai Court of First Instance by migrating the website from “http://prettogo.com” to “https://prettogo.com” (the secure version of HTTP), which is available to Internet users both inside and outside the UAE.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Respondent’s PRET TO GO trade mark is a coined mark which is a syntactically unusual and unique juxtaposition of the French term “pret” and the English words “to” and “go”. The Respondent’s PRET TO GO trade mark is distinctive and therefore merits the highest degree of trade mark protection in various jurisdictions.

The Complainant’s trade marks PRET and PRET A MANAGER are French terms which translate to “ready” and “ready to eat” respectively. When used in connection with food and restaurant services, the terms are generic.

Rights or Legitimate Interests

The Respondent has trade mark registrations for PRET TO GO in various jurisdictions, including in India, Saudi Arabia, Lebanon and the UAE. The Respondent has been using the PRET TO GO trade mark since 2014, for a continuous and uninterrupted period of 4 years. The Respondent’s goods and services under the said mark have received widespread recognition amongst the public. The Respondent has spent a large amount on advertising and promotion of its products and services.

Bad Faith

The Complainant has not discharged its burden of proof to establish bad faith as the Complainant has not provided evidence that the Respondent knew or should have known of the Trade Mark. The Respondent has used the Disputed Domain Name since 2014, prior to the Complainant’s entry into the UAE market.

The Respondent uses the Disputed Domain Name to promote and operate its food and beverage business, and not for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant.

The proceedings amount to Reverse Domain Name Hijacking (“RDNH”) by the Complainant. The Respondent has acted in good faith, in accordance with the legitimate rights of the Respondent.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

A. Procedural Issues

On May 21, 2018 the Complainant emailed the Center to request to file further documents and submissions. On May 23, 2018 the Center issued a procedural order, accepting the Complainant’s request to submit further documents and allowing the Respondent to file any supplemental submissions in response. The Panel also requested further information regarding the various court decisions mentioned above. The Center received supplemental filings from both the Complainant and Respondent.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is included in full in the Disputed Domain Name, with the addition of the words “to go”. The inclusion of the words “to go”, which are generic terms, does nothing to detract from this confusing similarity.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel accepts that that the Complainant has made out a prima facie case. This finding is based on the following:

- The Complainant has not permitted the Respondent to use the Trade Mark. The Respondent has been found by the Dubai Court of Cassation to have infringed the Trade Mark, and is precluded from using the PRET TO GO trade mark in connection with its business in the UAE. The Respondent has not provided evidence that it trades using the name “Pret to Go” outside of the UAE. As such, it cannot be said that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods and services.

- The Respondent is no longer commonly known by the name “Pret to Go”, as it was required to change its trading name following the infringement proceedings.

- The Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.

The Complainant has provided evidence to show that the Respondent no longer has the right to use its PRET TO GO trade mark in the UAE, and the Respondent does not appear to be using PRET TO GO as a trade mark in the UAE, other than on the website at the Disputed Domain Name. For example, the Complainant has provided evidence that the Respondent’s cafes are unbranded, and are carrying products not branded PRET TO GO. Although the website at the Disputed Domain Name still features the trade mark PRET TO GO, this website is not fully functional, orders cannot be placed via the website, and it is clear what the website is actually promoting. The “Place an Order” and “Order Online” links are broken, as are links to pages such as “Our Shops”, “The Story” and “The Menu”.

Despite this, the Respondent does have a registered trade mark in the UAE. The Complainant has opposed this registration, but the Panel understands that the registration has been held to be valid and distinctive by the UAE Federal Court of First Instance and the Federal Court of Appeal. This decision is puzzling in light of the decision of the Dubai Court of Cassation, which found that the PRET TO GO trade mark infringed the Complainant’s Trade Mark (and is the reason the Respondent is no longer able to trade under this trade mark in the UAE). The Federal Court of Appeal’s decision regarding the Respondent’s UAE trade mark registration is currently the subject of a final appeal by the Complainant.

The Respondent also has pending and registered trade marks for PRET TO GO in several other jurisdictions. While some of these applications are in the process of being opposed by the Complainant, the Panel understands that some have proceeded to registration (for example, registered trade mark registration numbers 3247205 and 3247204 for PRET TO GO in India). However, as stated above, the Respondent has not provided evidence to show that it trades under the PRET TO GO trade mark outside of the UAE. The “Contact Us” page on the website at the Disputed Domain Name contains a map showing store locations, and the only locations shown are in the UAE (and it appears that these stores are no longer branded as PRET TO GO stores). Having said this, the Complainant has not demonstrated that the Respondent registered these trade marks for the primary purpose of obtaining rights to the Disputed Domain Name, to circumvent the application of the Policy, or to prevent the Complainant from exercising its rights in any of the relevant jurisdictions.

It is well established that the Policy is not designed to address complex business disputes (see, e.g., Ruff Roofers, Inc., Ruff Roofing, Inc. and Roofing by Ruff, Inc. v. Jean Ruff, WIPO Case No. D2014-1755 and UTVG Europe Holding B.V. v. Vitali S, WIPO Case No. D2014-1345). This dispute is part of a broader trade mark infringement dispute which involves complex matters of national law which the Panel is not equipped to interpret. The Parties provided contradictory submissions regarding the operation of the UAE court system, so the Panel has not been able to ascertain with any certainty the application of the judgments of the Dubai Courts and UAE Federal Court.

As the panel in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 stated, “[t]his Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”.

Moreover, the Complainant has obtained court orders in the UAE concerning the Disputed Domain Name. It is not the role of this Panel to second-guess a court. It is not the purpose of the Policy to implement or enforce a court’s judgment.

The Panel considers that the dispute raised in these proceedings forms part of a broader business dispute which is not suitable for resolution under the Policy.

In the circumstances, the Panel does not consider it appropriate in the circumstances to find that the Respondent has no rights or legitimate interests in the Disputed Domain Name, particularly where the Respondent may have valid trade mark rights in a corresponding term.

D. Registered and Used in Bad Faith

In light of the Panel’s finding in relation to the second element of the Policy, the Panel is not required to consider the final element.

E. Reverse Domain Name Hijacking

The Respondent has asked that a finding of RDNH be made against the Complainant. While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified.

The Complainant produced arguments for each element of the Complaint and succeeded on the first element. The Complainant also has a judgment against the Respondent for infringement of the Trade Mark in the UAE. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: June 11, 2018