юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'





Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Le Cordon Bleu v. Ecole de Cuisine Manille

Case No. D2006-1220

 

1. The Parties

Complainant is Le Cordon Bleu International B.V. (“Complainant”), of Amsterdam, the Netherlands.

Respondents are Ecole de Cuisine Manille and/or Ma. Lourdes Dayrit (“Respondents”) of Pasig City, the Philippines.

 

2. The Domain Names and Registrar

The disputed domain names <ecmilecordonbleu.com> and <lecordonbleumanille.com> (the “Domain Names”) are registered with eNOM, Inc.

 

3. Procedural History

On September 21, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On September 25, 2006, the Center received hardcopy of the Complaint. On September 25, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in Respondent’s name. On September 28, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On September 26, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint with Amendment, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 12, 2006, the Center received the Response of Respondents via email. The Response contained copies of an administrative proceeding before the Intellectual Property Organization (“IPO”) of the Philippines in which Complainant and Respondents were parties. Nothing in the Response directly addressed the issues before the Panel.

On November 13, 2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

On November 14, 2006, the Panel accepted a supplemental filing entitled Reply from Complainant and gave Respondents until November 19, 2006, to submit any further supplemental filing. After a request by Respondents for additional time, the deadline for Respondents’ supplemental filing was extended until November 28, 2006.

A final request by Complainant to file a summary memorandum was granted. Each Party was given until December 15, 2006, to file a summary memorandum of its position. On December 19, 2006, the Center delivered a summary memorandum from each party to the Panel.

 

4. Factual Background

Complainant is a well-known company operating culinary schools worldwide. Since 1895, the name and mark LE CORDON BLEU (the “Mark”) has been associated with the business of Complainant and its predecessors and used in connection with the provision of its services and the sales of its goods worldwide. Today Complainant is truly international with 27 schools in more that 15 countries. Complainant accepts approximately 22,000 students per year. The same name and mark has also been used in respect of the international marketing and promotion activities of Complainant.

The LE CORDON BLEU Mark in several variations has been registered and applied for in several countries. At least two of those registrations are in the Philippines where Respondents are domiciled and other registrations include the Benelux Countries, the European Community and the United States of America.

Respondents have provided copies of an objection they filed with the Philippines IPO to the registration of a third registration by Complainant involving the LE CORDON BLEU Mark. The Philippines IPO appears to have sustained Respondents’ objection because of a long standing prior use of the phrase “Cordon Bleu” in the Philippines. Complainant has stated in its Reply that the Philippines IPO order sustaining the objection to Complainant registration of the Mark is not final and is still pending on judicial appeal. Nothing in the record indicates that Complainant’s two previous registrations CORDON BLEU and DEVICE #60631 (Class 21) or LE CORDON BLEU PARIS 1895 and DEVICE #54352 (Class 41) have been challenged.

 

5. Parties’ Contentions

A. Complainant

(i) Complainant contends that it has registrations of LE CORDON BLEU Mark worldwide.

(ii) Complainant argues that the Domain Names are confusingly similar to LE CORDON BLEU Mark, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the Mark with the addition of generic terms.

(iii) Complainant contends that Respondents have no rights or legitimate interests in the Domain Names, pursuant to paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondents cannot demonstrate rights or legitimate interest in the Domain Names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Respondents cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because they are not commonly known under either of the Domain Names. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use LE CORDON BLEU Mark in a domain name or in any other manner.

Respondents cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondents have deliberately registered the Domain Names containing LE CORDON BLEU Mark to attract the attention of Internet users.

(iv) Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of paragraph 4(a)(iii).

Complainant argues that the Respondents have intentionally registered the Domain Names and made LE CORDON BLUE Mark part of their corporate name to intentionally deceive internet users and others into believing that Respondents are associated with Complainant. Complainant further alleges that Ma. Lourdes  Dayrit and her mother Ms. Pat Dayrit have both attended Le Cordon Bleu School in Paris and have actual knowledge of the LE CORDON BLEU Mark.

Pursuant to the Policy, paragraph 4(b)(iv) by using the domain name, Complainant alleges that Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or location or of a product.

B. Respondent

(i) Respondents do not dispute that Complainant has registrations of LE CORDON BLEU Mark, even in the Philippines, but does provide an order from the Philippines IPO sustaining an objection to an application for registration #72264 of LE CORDON BLEU and DEVICE (Classes 8, 9, 16, 21, 24, 25, 29, and 30).

(ii) Respondents do not contest that the Domain Names are identical or confusingly similar to the LE CORDON BLEU Mark.

(iii) Respondents may be inferred to be asserting that they have rights to or legitimate interests in the Domain Names because they have conducted a business operation in the Philippines for several decades using as Ecole Cordon Bleu de Manille, utilizing as an integral part of their business the phrase “cordon bleu”.

(iv) Respondents may be inferred to be asserting that they have not registered or used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Enforceable Trademark Rights

Complainant contends that it has registrations of LE CORDON BLEU Mark worldwide. Respondents do not dispute that Complainant has such worldwide registrations, including in the Philippines. On the record presented in this proceeding, the legal situation between the parties in the Philippines is unclear. Respondents appear to have objected to the use of the phrase “le cordon bleu” as part of application #72264 for “LE CORDON BLEU and DEVICE” (Classes 8, 9, 16, 21, 24, 25, 29, and 30). The objection seems to have been administratively upheld by the Philippines IPO, but subject to existing judicial review. The other registrations of CORDON BLEU PARIS 1865 and of CORDON BLEU appear to have been approved without objection.

The Panel need only decide the narrow issue of whether Complainant has enforceable trademark rights. Despite the situation in the Philippines, the Panel finds for purposes of this proceeding that the worldwide registrations of Complainant covering the LE CORDON BLEU Mark constitute enforceable trademark rights.

B. Identi or Confusing Similar

Complainant further contends that the Domain Names are identical with and confusingly similar to the LE CORDON BLEU Mark pursuant to the Policy, paragraph 4(a)(i), because they wholly incorporate the Mark with the addition of generic terms.

Respondents have not contested the assertions by Complaint and that the Domain Names are confusingly similar to the LE CORDON BLEU Mark.

As numerous courts and prior URDP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.

The Panel notes that the entirety of the LE CORDON BLEU Mark is included in the Domain Names. Therefore, the Panel finds that the Domain Names are confusingly similar to the LE CORDON BLEU Mark pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

Complainant contends that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii). Complainant alleges that Ms. Pat Dayrit and her daughter Ma. Lourdes Dayrit have each attended the Cordon Bleu Cooking School in Paris. The website for Respondents informs the Internet user that:

“More than fifty years ago, a young woman crossed an ocean to learn the fundamentals of French cooking at the legendary Le Cordon Bleu and to become the first Filipino to receive the much coveted Grande Diploma. In 1948, upon her return, she opened a culinary training center for young women, homemakers and enthusiasts. This young woman was none other than culinary legend Pat Limjuco Dayrit and the school she founded was Le Cordon Bleu Manille. Le Cordon Bleu Manille has since evolved under the leadership of its present Directress, Loudette Dayrit, daughter of Pat Dayrit, and a product of her mother’s rigid and exact training.”

According to Complainant, Respondents have actual knowledge of the rights of Complainant and have traded on Complainant’s LE CORDON BLEU Mark without permission. Therefore, none of the business activities can be deemed legitimate for purposes of establishing rights or legitimate interests pursuant to paragraphs 4(c)(i), (ii) or (iii) of the Policy.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondents have no rights to or legitimate interests in the Domain Names. Once the Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainant has come forward to make its prima facie case. Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Respondents have provided the Panel with copies of their objection in the administrative proceeding before the Philippines IPO. The evidence before this Panel does not establish that the order is final or what findings of fact have been made. Therefore, insufficient evidence is presented that Respondents have established a right or legitimate interest in the Domain Names.

Therefore, the Panel finds that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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 website or other on-line 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

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of paragraph 4(a)(iii). Complainant argues that Respondents have intentionally registered the Domain Names and made LE CORDON BLUE Mark part of their corporate name to deceive Internet users and others into believing that Respondents are associated with Complainant. Complainant further alleges that Ms. Pat Dayrit, the mother of Respondent, Ma. Lourdes Dayrit attended Le Cordon Bleu School in Paris and has actual knowledge of the rights of Complainant. Complainant cites the quote from Respondents’ website as set forth above.

Complainant alleges a violation of paragraph 4(b)(iv) that by using the Domain Names Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website, 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.

The Panel finds that the use of the LE CORDON BLEU Mark in the Domain Names was intentional and that the elements of paragraph 4(b)(iv) have been met.

Based upon this evidence, the Panelist finds that Complainant has established that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

This decision is made without prejudice to any final judicial ruling and supporting finding of facts from the Philippines IPO or other national court.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain <ecmilecordonbleu.com> and <lecordonbleumanille.com> be transferred to Complainant.


Richard W. Page
Sole Panelist

Dated: December 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1220.html

 

На эту страницу сайта можно сделать ссылку:

 


 

На правах рекламы:

Произвольная ссылка:





Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.