WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Le Cordon Bleu International B.V. v. Gordon Blu Spolka Z Ograniczona Odpowiedzialnoscia

Case No. D2018-1989

1. The Parties

The Complainant is Le Cordon Bleu International B.V. of Amsterdam, Netherlands, represented by Rosanne Kronenburg, Netherlands.

The Respondent is Gordon Blu Spolka Z Ograniczona Odpowiedzialnoscia of Warsaw, Poland.

2. The Domain Name and Registrar

The disputed domain name <gordonblucatering.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 1, 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 September 3, 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 September 4, 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 September 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2018.

The Center appointed Christian Schalk as the sole panelist in this matter on October 5, 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is a culinary and hospitality education company with the purpose of transmission and influence of French gastronomy. The company is active for more than 120 years in currently more than 20 countries. According to the Complainant, it operates more than 35 institutes where it trains every year 20.000 students of over 100 nationalities. Apart from that, the Complainant produces and sells under its own brand a wide range of kitchen utensils, books and magazines, clothing and other products related to kitchen and cooking products.

The Complainant owns trademark rights in LE CORDON BLEU in many countries of the world, among others the following trademarks:

French trademark registration No. 1295951 LE CORDON BLEU, registration date January 15, 1985, covering goods and services in Int. Classes 4, 5, 8, 9, 11, 14, 16, 17, 20, 21, 22, 24, 25, 28, 29, 30, 31, 32, 33, 34, 39, 41 and 42;

International trademark registration No. 494541 LE CORDON BLEU, registration date June 28, 1985; covering goods and services in Int. Classes 4, 5, 8, 9, 11, 14, 16, 17, 20, 21, 22, 24, 25, 28, 29, 30, 31, 32, 33, 34, 39, 41 and 42;

EU Trademark registration No. 4751178 LE CORDON BLEU, registration date August 6, 2006; covering goods and services in Int. Classes 8, 21, 41 and 42;

The Complainant operates websites under the domain names <lecordonbleu.com> and <cordonbleu.com> and owns also the domain name <cordonbleucatering.com>.

The Respondent registered the disputed domain name on August 20, 2018. The disputed domain name resolves to a website where in the top a combination consisting of a little fork and a knife is displayed. Below, it is written in small letters: “Gordon Blue Catering”. The major part of the website is written in Polish language and shows pictures of different dishes, such as Italian Gnocchi and a kind of soup. When clicking on a link below, a window opens with a menu in Polish language.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues that the disputed domain name consists of an intentional misspelling of the Complainant’s trademark CORDON BLEU since the letter “c” is replaced by a “g” and the letter “e” is missing. The Complainant states in this context further that a potential confusion is enhanced by the fact that a service such as catering is closely related to the business of the Complainant and therefore, a consumer or user of the Internet viewing the website to which the disputed domain name resolves would be likely assume that this website or its operator is affiliated with the Complainant while this is not the case.

The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no indication that the Respondent is commonly known by the disputed domain name. The Complainant argues further that his CORDON BLEU trademark has been extensively used before the Respondent registered the disputed domain name, that the Respondent has not been authorized to include a trademark highly similar to his CORDON BLEU trademark in a domain name or to make any other use of it, and that the Respondent must have been aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

Furthermore, the Complainant states that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent registered a domain name, which is confusingly similar to his CORDON BLEU trademark to take advantage of the confusion and misspelling between his CORDON BLEU trademark and the disputed domain name. The Complainant is widely known by the name (LE) CORDON BLEU and that his CORDON BLEU trademarks have a strong reputation in multiple countries. The Complainant alleges further that the services offered on the website to which the disputed domain name resolves are almost identical to the services related to the business of the Complainant. Therefore, Internet users might believe that this website is operated by the Complainant, when such is not the case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademark CORDON BLEU. The disputed domain name is confusingly similar to the Complainant’s trademark CORDON BLEU.

It is the consensus view of UDRP panels that the first element functions primarily as a standing requirement (see section 1.7 of the WIPO Overview 3.0). The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity (see, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).

The dominant part of the disputed domain name (“gordonblu”) differs from the Complainant’s CORDON BLEU trademark only in two letters. The first syllable of the disputed domain name starts with the letter “g” while the first syllable of the Complainant’s trademark starts with the letter “c”. The second syllable of the Complainant’s trademark and of the disputed domain name are identical. The third syllable of the disputed domain name lacks the letter “e” which is featured in the Complainant’s mark. From a phonetic point of view, both the disputed domain name and the Complainant’s trademark sound very similar when spoken in a daily routine situation. The pronunciation of the first two syllables “gor-den” and “cor-don” can be perceived very similar. The slight differences between the third syllables of the disputed domain name and the Complainant’s trademark, “blu” and “bleu”, are all but identical. Overall, the dominant parts of the Complainant’s trademark and the disputed domain name are very similar.

(In addition, the letters “c” and “g” are quite close to each other on a typical “qwerty” keyboard, meaning that a single slip of the finger could result in an Internet user who intended to visit the Complainant’s website visiting the Respondent’s website instead.)

Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “catering” does not prevent a finding of confusing similarity with the Complainant’s trademark.

Furthermore, the gTLD “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark CORDON BLEU in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” are generally disregarded when determining if there is identity or confusing similarity. Where a domain name (substantially) incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy (seeSportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 andKabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.

The disputed domain name is confusingly similar to the Complainant’s trademark and has been directed by the Respondent to a website where catering services are offered. Such services are services in the field of gastronomy and are therewith identical to the services offered by the Complainant.

Therefore, the only reason for the Respondent to register the disputed domain name appears, on balance, to be to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.

In this case, the word “catering” is a common term used to describe the alleged purpose of the website to which the disputed domain name resolves, namely, offering of services in the field of gastronomy.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. The Respondent and the Complainant are both active in the field of gastronomy services. The disputed domain name shows a strong phonetic similarity with the Complainant’s CORDON BLEU marks. In addition, on the website to which the disputed domain name resolves, catering services are offered. Such services correspond to those in which the Complainant seems to have a strong reputation. Therefore, the Panel is convinced that the Respondent must have been aware of the Complainant when it registered the disputed domain name.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The Complainant enjoys a strong reputation in the field of promoting (French) gastronomy. The Complainant offers in addition a wide range of products and services in the field of gastronomy over its website for clients all over the world. Therefore, Internet users searching for the Complainant’s services may be decepted when they mistype the Complainant’s CORDON BLEU trademark and get then directed to the Respondent’s website. One consequence could be that they give up searching for the Complainant’s services and look for products of the Complainant’s competitors.

Furthermore, Internet users in Poland, where the Respondent offers his catering service may be aware of the Complainant given the fact that French cuisine and gastronomy certainly enjoys a very high reputation also in this country. It may also be that such Internet users would notice that there is no link between the parties but nevertheless order gastronomy services offered by the Respondent on the website to which the disputed domain name resolves. In that case, the Respondent would take economic advantage of Internet users who mistype the Complainant’s trademark. The only reason for such profits is the registration of the disputed domain name by the Respondent.

Therefore, it appears to the Panel that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <gordonblucatering.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: November 1, 2018