WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Cordon Bleu International B.V. v. Registration Private, Domains by Proxy, LLC / Amit Nemanim
Case No. D2016-0718
1. The Parties
The Complainant is Le Cordon Bleu International B.V. of Amsterdam, the Netherlands.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Amit Nemanim of Beverly Hills, California, United States.
2. The Domain Name and Registrar
The disputed domain name <lecordonbleuloanforgiveness.com> 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 12, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2016, 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 14, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 15, 2016.
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 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on May 13, 2016. 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.
On March 30, 2016, the Panel extended the due date for the decision until June 3, 2016, in accordance with paragraphs 10 and 12 of the Rules.
4. Factual Background
The Complainant states that it is a culinary and hospitality education company which operates worldwide. The Complainant is present in 20 countries with more than 50 schools and 20,000 students of over 90 nationalities. The Complainant also produces and sells a wide range of products under its own brand, among others, kitchen utensils and containers, textile goods, cutlery, books and magazines, food stuffs and clothing.
The Complainant provides evidence of having registered marks for CORDON BLEU (including United States Trademark, Registration No. 2149920, registered on April 14, 1998) and LE CORDON BLEU (including United States Trademark, Registration No. 3102495, registered on June 13, 2006) alone and as part of a device or with other words, in respect of a wide range of goods and services. The Complainant has registered its marks in multiple jurisdictions, including China, Japan, Brazil, Australia, the United States and various European countries. The French words "Le Cordon Bleu" may be translated into English as "The Blue Ribbon".
The Complainant operates a website at "www.lecordonbleu.com", and has owned that domain name since October 1996.
The disputed domain name was registered on January 16, 2016. The Complainant provides evidence that the disputed domain name resolved to a website featuring an image of the "Le Cordon Bleu Institute" and including the name and logo of the Complainant. In the middle of that image are two separate boxes to choose either "Qualify Here" or "Call Now". Further into the website, there is a page for Internet users to fill in an apparent form, with drop down menus, under headings for "Approximate Loan Amount", "Current Loan Status", "Estimated Annual Income", and "Loan Type". The website also includes the following prominent statement: "During the most recent lawsuit, the Art Institutes must pay $95.5 Million and forgive an additional $102.9 million in Student Loans. If you attended the Arts Institutes, regardless of when you attended, you may qualify for partial or even full loan forgiveness."
In the absence of a Response, there is little known about the business of the Respondent.
5. Parties' Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to its registered marks. The disputed domain name fully incorporates the Complainant's trademark LE CORDON BLEU. An Internet user viewing the Respondent's website would be likely to assume that it is affiliated with the Complainant when it is not. The addition of the term "loan forgiveness" to the disputed domain name is insufficient to avoid confusion with the Complainant's trademarks.
The Complainant says, secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant. On February 24, 2016, the Complainant sent a letter to the Respondent regarding the registration of the disputed domain name, but got no response.
Thirdly, the Complainant says that the Respondent registered and has used the disputed domain name in bad faith. It is clear that the Respondent registered the disputed domain name to take advantage of the confusion with the Complainant's mark LE CORDON BLEU, for commercial gain. The Respondent's website misleads Internet users into believing that they are dealing with the Complainant. The Respondent has taken active steps to conceal its true identity, by registering the disputed domain name under a name that is not a registered business or personal name by using the Domains By Proxy private registration service. Further, the Complainant received no reply to its letter of February 24, 2016.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and has been used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant provided extensive evidence of its registered rights for its LE CORDON BLEU mark. The Panel finds that the disputed domain name is confusingly similar that mark, for the following reasons:
The disputed domain name wholly incorporates the Complainant's mark. It is well established that this can form a basis for confusing similarity. See, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005‑0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
In addition to incorporating the Complainant's mark, the disputed domain name appends the words "loan forgiveness". The Panel does not think that the addition of these descriptive words removes the confusing similarity. A number of past cases have found that the addition of merely descriptive words does not remove the confusing similarity. See, e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.
In this case, the Complainant also operates an educational business, which presumably operates for fee‑paying students. It is easily conceivable that some fee-paying students would take out loans for fund these courses. As such, the taking out of loans, and the associated potential for "loan forgiveness", is a matter that may relate to the Complainant's business. As those terms may relate to the Complainant's business, it is reasonably foreseeable that the use of those terms in the disputed domain name may only serve to increase confusion for some Internet users who are familiar with the Complainant.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark.
B. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0"), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
The Complainant has made a prima facie case. The Respondent has submitted no Response, nor made any other communication in connection with this case. There is otherwise no evidence in the case file that suggests the Respondent has rights or legitimate interests in the disputed domain name. Further, the Panel does not consider that the Respondent could establish such rights or legitimate interests, in the circumstances of bad faith set out below.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must have known, or ought to have known, of a complainant's rights, and intended to unfairly take advantage of them.
In this case, the Respondent appears to have established a website that prominently features the Complainant's mark, gives the appearance of some association with the Complainant, and purports to be part of some scheme for the forgiveness of loans associated with "Arts Institutes". Although not addressed in the brief Complaint, it seems implied in the Respondent's website that the Complainant is one of those institutes, and that the Respondent's website operates in accordance with a related loan forgiveness scheme.
At a minimum, and in the absence of a Response, this evidence indicates that the Respondent was clearly aware of the Complainant and its mark. The Respondent's deliberate connection of that mark to a commercial loan scheme (whether it operates in fact or not) clearly indicates the Respondent's intent to trade on confusion with the Complainant's mark, by registration and use of the disputed domain name. In these circumstances, the Panel also considers that the Respondent's use of a privacy service, and failure to respond to the Complainant's letter of demand, are further indications of bad faith.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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 <lecordonbleuloanforgiveness.com> be transferred to the Complainant.
James A. Barker
Date: June 3, 2016