WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Cordon Bleu International B.V. v. Alexander Bykhousky, InMotion Hosting, Inc.
Case No. D2017-0061
1. The Parties
The Complainant is Le Cordon Bleu International B.V. of Amsterdam, the Netherlands, internally-represented.
The Respondent is Alexander Bykhousky, InMotion Hosting, Inc. of Los Angeles, California, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <lecordonbleustudentloanforgiveness.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on January 23, 2017, to correct an administrative formality.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 January 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 7, 2017. 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 a culinary and hospitality education company of some 120 years standing. About 20,000 students are trained annually through Le Cordon Bleu institutes internationally. The Complainant also sells products under its own brand including kitchen utensils, books, food, and clothing.
The Complainant holds about 450 registered trademarks or applications in 100 countries or trademark jurisdictions for the word mark LE CORDON BLEU, of which the following are sufficiently representative for the purposes of this proceeding:
LE CORDON BLEU, United States Patent and Trademark Office, principal register, registered February 3, 2009, registration number 3570080, classes 7, 8, 21, 29, 30;
LE CORDON BLEU, international trademark, registered June 28, 1985, registration number 494541, classes 4, 5, 8, 9, 11, 14, 16, 17, 20, 21, 22, 24, 25, 28, 29, 30, 31, 32, 33, 34, 41, 42.
The Complainant also uses the domain name <lecordonbleu.com>, registered in 1996.
There is no significant background information available about the Respondent except for the name and address provided to the Registrar for the purpose of registering the disputed domain name, which was registered on August 18, 2016. According to the evidence provided by the Complainant, the disputed domain name resolved to a website referring to the Complainant and requesting the provision of personal data to apply for a loan forgiveness program. The disputed domain name presently resolves to a website displaying a notice suggesting that the IP address may have changed, or that there has been a server misconfiguration, or that the site may have moved to a different server.
5. Parties’ Contentions
The Complainant contends that the disputed domain name fully incorporates and is confusingly similar to the Complainant’s trademark LE CORDON BLEU and that the additional words “student loan forgiveness” are insufficient to avoid confusing similarity.
The Complainant further contends that the Respondent has not been authorised to use the Complainant’s trademark and does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent’s website at the disputed domain name refers to the business of the Complainant and therefore the Respondent must have been aware of the Complainant and its trademark.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent intends to take advantage of the Complainant’s trademark by confusion with the disputed domain name for commercial gain. The Respondent’s website offers services related to the business of the Complainant and purports to be part of a scheme for the forgiveness of associated student loans.
The Complainant has cited a previous decision under the Policy, concerning the domain name <lecordonbleuloanforgiveness.com>, (see Le Cordon Bleu International B.V. v. Registration Private, Domains by Proxy, LLC / Amit Nemanim, WIPO Case No. D2016-0718) which was decided in the present Complainant’s favour, that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
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 Panel is satisfied by the evidence produced that the Complainant has the rights required for the purposes of the Policy in the registered trademark LE CORDON BLEU.
The disputed domain name <lecordonbleustudentloanforgiveness.com> is clearly readable as “Le Cordon Bleu student loan forgiveness .com”, of which the generic Top-Level Domain (“gTLD”) designation “.com” may in this instance be disregarded in the determination of confusing similarity. The disputed domain name therefore resolves to a clear expression of the entirety of the Complainant’s registered trademark LE CORDON BLEU, followed by the additional words “student loan forgiveness”. The words “student loan forgiveness” are found not to be distinguishing, but on the contrary, since they refer to a matter impinging on education, to enhance the potential for confusion between the disputed domain name and the Complainant’s trademark. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and has not been authorised to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and 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 has made no reply and the Panel does not anticipate that the Respondent could reasonably assert any rights or legitimate interests in the disputed domain name under paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
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 web site 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.
The disputed domain name presently resolves to a website displaying a notice suggesting either that the IP address may have changed, or that there has been a server misconfiguration, or that the site may have moved to a different server. In effect the disputed domain name is not in active use and may be described as passively held. The Complainant’s evidence suggests that the disputed domain name was previously used in connection with a website that referred to the Complainant and requested the provision of personal data to apply for a loan forgiveness program.
Whilst previous decisions under the Policy do not have precedential status, the decision in the early case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, has been widely cited in dealing with cases of passive holding. The panelist in that caseexplored the rationale that, in certain circumstances, specific to a case, passive holding of a domain name could satisfy the requirement for use in bad faith under paragraph 4(a)(iii) of the Policy.
Persuasive circumstances characterising the present case include: that the Complainant’s trademark as appropriated into the disputed domain name is by any reasonable standards famous, being of 120 years standing and trademarked in some 100 countries and trademark jurisdictions; that there is no evidence from the Respondent of any good faith use or intended good faith use of the disputed domain name; that the Respondent has not contested the Complaint; and furthermore, that in all the circumstances it is not reasonably possible for the Panel to conceive of any legitimate use the Respondent could make of the disputed domain name without the Complainant’s authorisation. Indeed, the disputed domain name may have been used in an attempt to obtain personal data by misleading unsuspecting Internet users, or for some other unauthorised purpose.
The circumstances exemplified in paragraph 4(b) of the Policy are in any case without limitation. On the evidence, and for the reasons cited in the previous paragraph, the Panel finds on the balance of probabilities that the disputed domain name was registered by the Respondent in the knowledge of the Complainant’s trademark and in bad faith. Furthermore the fact that the disputed domain name is not evidently in use at present does not preclude a finding that, by continuing to hold it for whatever purpose (which even the Respondent need not have decided), the Respondent is using the disputed domain name in bad faith. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith within the meaning of 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 <lecordonbleustudentloanforgiveness.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 14, 2017