WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Cordon Bleu International B.V. v. Carla Rodrigues
Case No. D2018-1990
1. The Parties
The Complainant is Le Cordon Bleu International B.V. of Amsterdam, Netherlands, represented internally.
The Respondent is Carla Rodrigues of Boylston, Massachusetts, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cordonbleuonline.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 August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 4, 2018, 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 Center verified that 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 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 4, 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, Le Cordon Bleu International B.V., is a culinary and hospitality education company which operates worldwide. The Complainant has presence in 20 countries with more than 35 institutes and 20,000 students of over 100 nationalities. Additionally, the Complainant produces and sells a wide range of products under its own brand, inter alia, kitchen utensils and containers.
The Complainant is the owner of trademark registrations in multiple jurisdictions for the trademarks CORDON BLEU and LE CORDON BLEU. Among others, the Complainant is the owner of the following trademark registrations:
- LE CORDON BLEU United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) Trademark Registration No. 3115875, Registered on August 12, 2016,
- CORDON BLEU, United Kingdom Trademark Registration No. 3115878, Registered on January 8, 2016,
- LE CORDON BLEU, United States Trademark Registration No. 3570080, Registered on February 3, 2009,
- CORDON BLEU, United States Trademark Registration No. 2149920, Registered on April 14, 1998,
The earliest registrations in the name of the Complainant for the trademark LE CORDON BLEU dates back to the year 1963.
The Complainant has also registered several domain names, including <lecordonbleu.com>, registered on October 11, 1996; <cordonbleu.com >, registered on June 28, 2001; and its online shop <cordonbleushop.com> registered on May 5, 2004 reflecting its trademarks Le CORDON BLEU and CORDON BLEU.
The Disputed Domain Name was registered on November 6, 2017, long after the Complainant has registered the trademarks LE CORDON BLEU and CORDON BLEU.
The Disputed Domain Name resolves to a website that offers sinks and faucets with the name “Cordonbleu” which is visible in the left corner of the website. At the time of the decision, the website gives the impression of being a functioning site but no products are actually being offered.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Disputed Domain Name uses the Complainant’s trademark CORDON BLEU in its entirety with the descriptive term “online”. The Complainant argued that this descriptive term is not sufficient enough to avoid any risk of confusion with the Complainant’s trademark and business activities.
Thus, the Disputed Domain Name could be considered identical and/or confusingly similar.
Rights or legitimate interest
The Complainant has not granted any licenses or other rights to the Respondent to use the trademark in the Disputed Domain Name or to register any domain name which incorporates Complainant’s trademark. In addition, the Respondent does not show that is commonly known by the Disputed Domain Name, since the company operated by the Respondent is called Ezi Group, Inc. which does not include the term “Cordon Bleu”.
Furthermore, the Complainant filed an opposition against the United States trademark application No. 87699760 CORDON BLEU for kitchen sinks which was filed by the Respondent and published by the United States Patent and Trademark Office (“USPTO”) in May 2018. The Respondent failed to file a response. Thus, the USPTO granted the opposition and the application was refused.
The Complainant has been using its trademark long before than the registration of the Disputed Domain Name by the Respondent.
Registration and use in bad faith
The Complainant alleges that the Disputed Domain Name <cordonbleuonline.com> was registered in bad faith. The products offered by the Respondent are related to the culinary business of the Complainant. Therefore, the Respondent registered an identical or confusingly similar domain name to take advantage of the confusion between the Disputed Domain Name and the Complainant’s trademark for commercial gain.
In this sense, consumers would mistakenly assume that the Disputed Domain Name is operated by the Complainant.
Consequently, the Complainant concludes that bad faith has been established.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in CORDON BLEU as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel finds that the Disputed Domain Name <cordonbleuonline.com> is confusingly similar to the Complainant’s trademark CORDON BLEU. The CORDON BLEU trademark is clearly recognizable within the Disputed Domain Name. The Panel has no difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark CORDON BLEU, as the addition of the descriptive term “online” does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
i. Before any notice to you of the dispute, your use of, 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The company which appears to be operated by the Respondent is called Ezi Group, Inc. which does not include the term “Cordon Bleu”. There is no evidence that the Respondent is commonly known by the Disputed Domain Name.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name by several decades.
The Respondent has failed to show that she has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. Furthermore, the USPTO denied the trademark application No. 87699760 CORDON BLEU.
The Respondent had the opportunity to demonstrate her rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel is convinced that the Respondent was aware of the Complainant’s trademark when she registered the Disputed Domain Name. At the date of registration of the Disputed Domain Name, the Complainant’s trademarks were already actively and prominently used worldwide for various years, including in the United States.
The Disputed Domain Name was registered on November 6, 2017 while the earliest registration in the name of the Complainant for the trademark LE CORDON BLEU dates back to 1963. Thus, this Panel finds that the Respondent was aware of the Complainant’s CORDON BLEU and LE CORDON BLEU trademarks.
The Panel visited the Disputed Domain Name and was able to verify that the Respondent is running a web shop that appears to offer sinks and faucets with the name “Cordonbleu”. However, while the website gives the impression of being operational, no products are actually being offered. In any event, the products supposedly offered by the Respondent are related in some way to the business of the Complainant. Therefore, the Panel considers that the Respondent must have had knowledge of the Complainant’s rights in the CORDON BLEU and LE CORDON BLEU trademarks when she registered the Disputed Domain Name.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and she has intentionally created likelihood confusion with the CORDON BLEU and LE CORDON BLEU trademarks in order to attract Internet users for her own commercial gain by taking advantage of the Complainant’s trademarks and/or to disrupt the Complainant’s business.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood confusion with Complainant’s trademarks and websites in order to attract Internet users for her own commercial gain, as required by paragraph 4(b) (iv) of the Policy and/or to disrupt the business of the Complainant.
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <cordonbleuonline.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: October 18, 2018