Le Cordon Bleu International B.V. and Le Cordon Bleu Inc. v. Lucas Beeson / The Beeson Companies
Claim Number: FA1708001745794
Complainant is Le Cordon Bleu International B.V. and Le Cordon Bleu Inc. (“Complainant”), represented by Rosanne Kronenburg, The Netherlands. Respondent is Lucas Beeson / The Beeson Companies (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cordonbleu.us>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2017; the Forum received payment on August 23, 2017.
On August 23, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <cordonbleu.us> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cordonbleu.us. Also on August 24, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Le Cordon Bleu International B.V. and Le Cordon Blue Inc., uses the CORDON BLEU mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,570,080, registered Feb. 3, 2009). Respondent’s <cordonbleu.us> is identical or confusingly similar as it contains Complainant’s mark in its entirety, merely adding the country code top level domain (“ccTLD”) “.us.”
Respondent does not have rights or legitimate interests in the <cordonbleu.us> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the CORDON BLEU mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is attempting to sell the disputed domain name along with other domain names for the restaurant industry.
Respondent has registered or used the <cordonbleu.us> domain name in bad faith. Respondent uses the disputed domain name primarily for the purpose of selling domain name registrations for the restaurant industry. While Complainant operates in the higher education—and more specifically, the restaurant—industry, it is clear that Respondent registered its identical domain name for the primary purpose of selling the domain name to Complainant or a competitor for financial gain. Respondent’s organization also has a history of bad faith domain name registrations. See, e.g., Robert Downey Jr. v. Joseph Beeson / The Beeson Group IP, FA 1724169 (Forum May 8, 2017) (ordering transfer). Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CORDON BLEU marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cordonbleu.us> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the CORDON BLEU mark based upon its registration with the USPTO (Reg. No. 3,570,080, registered Feb. 3, 2009). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the CORDON BLEU mark per Policy ¶ 4(a)(i).
Complainant asserts that <cordonbleu.us> is confusingly similar to the CORDON BLEU mark as it contains the mark in its entirety and adds the ccTLD “.us.” Panels have found that the addition of a ccTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). The Panel agrees with Complainant and finds that the <cordonbleu.us> does not contain changes that would sufficiently distinguish it from the CORDON BLEU mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in <cordonbleu.us> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CORDON BLEU mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Lucas Beeson / The Beeson Companies.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the disputed domain name.
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (Forum Mar. 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶ 4(c)(i), even when Complainant did not argue this point). Therefore, the Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by the failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent is attempting to sell the <cordonbleu.us> domain name. Panels have found that an attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(c)(iv). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Respondent is offering various domain names related to the restaurant industry, an industry closely related to Complainant’s business activities. Therefore, the Panel agrees that such a use shows a lack of rights or legitimate interest in the disputed domain name.
Complainant has proved this element.
Complainant argues that Respondent has registered or used the <cordonbleu.us> in bad faith. Respondent is attempting to sell the <cordonbleu.us> domain name along with other restaurant industry domain names. Panels have found that attempting to sell a confusingly similar domain name to complainant’s mark for a financial gain is evidence of bad faith. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant notes that Respondent is offering domain names for the restaurant industry on the website “Welcome to Prime domains for the Restaurant Industry. Implicit in Respondent’s use, Complainant contends, is an underlying scheme or objective to induce Complainant or one of Complainant’s competitors to purchase the domain name from Respondent in excess of out-of-pocket costs given its demonstrated attractiveness in the restaurant industry, or to consumers in the restaurant industry. Therefore, the Panel finds that Respondent registered <cordonbleu.us> domain name for the sole purpose of selling the domain name to Complainant or to Complainant’s competitors for financial gain which is evidence of bad faith under Policy ¶ 4(b)(i).
Next, Complainant alleges that Respondent’s organization also has a history of bad faith domain name registrations. See, e.g., Robert Downey Jr. v. Joseph Beeson / The Beeson Group IP, FA 1724169 (Forum May 8, 2017) (ordering transfer). Where a respondent has previously been implicated as a bad faith cybersquatter, it may have a bearing on an instant dispute. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, the case Complainant cites includes a dissimilar individual, but presumably the same organization. Compare Robert Downey Jr. v. Joseph Beeson / The Beeson Group IP, FA 1724169 (Forum May 8, 2017) (ordering transfer), with Le Cordon Bleu International B.V. and Le Cordon Bleu Inc. v. Lucas Beeson / The Beeson Companies, FA 1745794 (Forum Pending Decision). The Panel finds Complainant has not proved that Lucas Beeson and Joseph Beeson are individuals which are part of a common organization—“The Beeson Companies”—and are effectively acting in tandem registering domain names in bad faith. Therefore, the Panel finds Complainant has failed to provide evidence which would satisfy Policy ¶ 4(b)(ii).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s CORDON BLEU mark and business because Complainant is widely known to countless customers and has trademarks and a strong reputation in many different countries. Respondent registered the domain name using Complainant’s CORDON BLEU mark and added the ccTLD “.us”. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the CORDON BLEU mark—which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cordonbleu.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 21, 2017
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