WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Cordon Bleu International B.V., Le Cordon Bleu, Inc. v. Lafine Bouche
Case No. D2017-0887
1. The Parties
Complainants are Le Cordon Bleu International B.V. of Amsterdam, Netherlands ("Complainant No. 1") and Le Cordon Bleu, Inc., of New York, United States of America ("United States") ("Complainant No. 2"), internally represented.
Respondent is Lafine Bouche of Long Island City, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <cordonbleu.nyc> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 2, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 15, 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.
On June 23, 2017 the Panel issued the Panel Order No. 1. On June 26, 2017, Complainants submitted a Supplemental Filing in response to the Panel Order No. 1, to which Respondent has not submitted any comment.
4. Consolidation of Complainants
In response to the Panel Order No.1, Complainants have submitted a request for consolidation of Complainants. The Panel considers that Complainants have satisfactorily demonstrated that they hold a common grievance against Respondent and, given that consolidation in this case is equitable and procedurally fair, the Panel decides to accept it.
5. Factual Background
Complainant No.1 is a company organized under the laws of The Netherlands, while Complainant No. 2 is a company organized under the laws of the United States. Complainants both belong to the Le Cordon Bleu group of companies which offers culinary and hospitality education worldwide.
Complainants have provided evidence that Complainant No. 1 is the registered owner of numerous trademarks relating to the designation "Le Cordon Bleu" including, inter alia:
- Word mark LE CORDON BLEU, United States Patent and Trademark office (USPTO), Registration No.: 3102495, Registration Date: June 13, 2006, Status: Active;
- Word mark LE CORDON BLEU, USPTO, Registration No.: 2149920, Registration Date: April 14, 1998, Status: Active.
Moreover, Complainant No.1 owns the domain names <lecordonbleu.com> as well as <cordonbleushop.com> which both redirect to Complainants' official websites at "www.cordonbleu.edu" as well as "www.cordonbleushop.com" in order to promote Complainants' education services and online sale facilities.
Respondent, a natural person or legal entity with apparent domicile in the United States, registered the disputed domain name on January 19, 2017. Complainants have provided evidence that at some point before the filing of this Complaint, the disputed domain name redirected to a commercial website offering French gourmet food for online sale. Currently the disputed domain name does not resolve to any active website.
Complainants request that the disputed domain name be transferred to Complainant No. 2.
6. Parties' Contentions
Complainants contend to be in business for over 120 years with a presence nowadays in 20 countries worldwide with more than 35 institutes and 20,000 students of over 100 nationalities being trained every year. Moreover, Complainants point to the fact that they produce and sell a wide range of products under their own brand, inter alia, food stuffs, kitchen utensils and containers, textile goods, cutlery, books and magazines and clothing. Also, Complainants recite that Complainant No. 1 has granted a license to Complainant No. 2 to use the LE CORDON BLEU trademarks in the territory of the United States.
Complainants submit that the disputed domain name is confusingly similar to Complainants' LE CORDON BLEU trademark, as it incorporates the term "Cordon Bleu" comprised therein in its entirety combined with the new generic Top-Level Domain ("gTLD") ".nyc", letting Internet users assume that a website under the disputed domain name is affiliated with Complainants, which it is not.
Moreover, Complainants assert that Respondent has no rights or legitimate interests with respect to the disputed domain name, since (1) none of the products offered at the website under the disputed domain name is labeled with a LE CORDON BLEU trademark, (2) no information can be found that the term "Cordon Bleu" is part of a company name related to Respondent, but purchases on that website rather point into the direction of the company La Fine Bouche, (3) Complainants did not authorize Respondent to include their LE CORDON BLEU trademark in a domain name or to make any other use thereof, and (4) Respondent must have been aware of Complainants' trade name and trademark rights at the time of the registration of the disputed domain name.
Finally, Complainants argue that Respondent registered and is using the disputed domain name in bad faith since the website under the disputed domain name sold at some point a variety of French gourmet food products and showed a logo containing the term "Cordon Bleu", demonstrating that Respondent registered an identical domain name to operate a web shop offering nearly identical products to those of Complainants to take advantage of the confusion between the disputed domain name and Complainants' LE CORDON BLEU trademark rights for commercial gain.
Respondent did not reply to Complainants' contentions.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <cordonbleu.nyc> is confusingly similar to the LE CORDON BLEU trademark in which Complainants have rights, either as trademark owner or as licensee.
The disputed domain name includes the terms "cordon" as well as "bleu", which are both also reflected in Complainants' LE CORDON BLEU trademark.
It is well accepted among UDRP panels and has become a consensus view that the confusing similarity test under the first element of the UDRP is primarily a standing requirement and typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7). Here, the disputed domain name includes the predominant parts "cordon" and "bleu" of Complainants' trademark which is why the Panel has no difficulty in finding that the latter is easily recognizable within the disputed domain name.
Therefore, Complainants have established the first element under the Policy as set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainants' undisputed contentions, that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainants' LE CORDON BLEU trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name "Cordon Bleu" or "Le Cordon Bleu" whatsoever. Finally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently uses or at least has used the disputed domain name at some point before the filing of this Complaint for a commercial website, where Respondent offered French gourmet food products by showing a logo containing the term "Cordon Bleu", thus directly competing with Complainants' business and website presence. The Panel, therefore, concludes that the disputed domain name obviously alludes to Complainants' LE CORDON BLEU trademark and business instead of a genuine business of Respondent, e.g. under the company La Fine Bouche, to which Internet users are referred via the terms and conditions which apparently apply when purchasing French gourmet food from the website under the disputed domain name. In this context, the Panel has also taken into account the UDRP panelists' consensus view that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; rather, the domain name should be genuinely used in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights (see WIPO Overview 3.0, section 2.10.1). Here, there is nothing apparent from the case file as to why Respondent needed to rely specifically on the term "Cordon Bleu" to promote its French gourmet food products other than to profit from the reputation of Complainants' LE CORDON BLEU trademark in the food business sector.
Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The use of the disputed domain name, which is confusingly similar to Complainants' LE CORDON BLEU trademark, to resolve to a commercial website headed "Cordon Bleu" which offers products in competition to Complainants' business, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainants' LE CORDON BLEU trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <cordonbleu.nyc> be transferred to Complainant No. 2.
Stephanie G. Hartung
Date: July 4, 2017