WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexho Alliance v. Entredomains, Inc.
Case No. D2002-1001
1. The Parties
The Complainant is Sodexho Alliance, avenue Newton, Montigny-le-Bretonneux, of France, represented by Rinuy, Santarelli of France.
The Respondent is Entredomains, Inc., West Sahara, Las Vegas, NV, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sodexhoonline.com> is registered with GKG.NET, INC (formerly GK Group LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2002. On October 29, 2002, the Center transmitted by email to GKG.NET, INC a request for registrar verification in connection with the domain name at issue. On the same day GKG.NET, INC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2002. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 25, 2002. A Response was filed with the Center on November 5, 2002.
The Center appointed Anders Janson as the sole Panelist in this matter on January 7, 2003. 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 independently determines and agrees with the assessment of the WIPO Center that the Complaint and Response is in formal compliance with the applicable requirements.
The Panel has issued its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules and the Response.
4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:
The Complainant is a company registered in France 1966. The Complainant is the owner of inter alia the domain names <sodexhonline.com> (registration date December 4, 2000) and <sodexho.com> (registration date October 23, 1995). The Complainant has business activities on a worldwide scale and is operating in several different countries, including the United States of America.
The Complainant is the owner of the following subsisting registrations of the mark "SODEXHO", covering a wide variety of goods and services:
I. French trademark registration No. 1 249 935 of the mark SODEXHO, filed on November 4, 1983;
II. US trademark registration No. 2 318 133 of the mark SODEXHO with star device, filed on July 8, 1998, and designating janitorial services; building maintenance; cleaning of buildings; disinfectant cleaning of health care facilities and nursing homes; laundry services for clothing and linen; construction and repair of buildings; ground transportation of patients for health care facilities and nursing homes; warehousing; training in the field of customer service; catering; restaurants; cafeterias; canteen services; vending machine services; design for others of food service facilities; engineering; sanitation consultation and engineering; nutrition counseling; child care; consultation in the fields of food service, space design, facilities management and energy conservation; security guard services; lawn care and groundskeeping services in international classes 37, 39, 41 and 42.
III. US trademark registration No. 2 549 592 SODEXHO with star device, filed on June 29, 2000, designating conducting marketing studies; business management consultation; business management assistance; business organization consultation; outdoor advertising; shop window dressing and display arrangement services, and business management of hotels; personnel recruitment and public relations, communications by computer terminals; communications via the Internet, namely transmission of information via the Internet, waste treatment, water treatment, production of energy, material treatment information, destruction of waste and trash, incineration of waste and trash, and recycling of waste and trash in international classes 35, 38 and 40.
IV. International mark (WIPO) No. 689 106 SODEXHO with star device, filed on January 28, 1998, designating the general headings of the international classes 16, 36, 37, 39, 41 and 42. This international mark is protected in the following countries: ALGERIA, AUSTRIA, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, SLOVAK REPUBLIC, RUSSIAN FEDERATION, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, UKRAINE, UNITED KINGDOM, VIETNAM.
V. International mark (WIPO) No. 694 302 SODEXHO with star device, filed on January 28, 1998, designating magnetic cards and memory cards in international class 9. This international mark is protected in the following countries: ALGERIA, ARMENIA, AUSTRIA, AZERBAIJAN, BELARUS, BENELUX, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, RUSSIAN FEDERATION, SLOVAK REPUBLIC, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, UKRAINE, UNITED KINGDOM, VIETNAM.
VI. International mark (WIPO) No. 746 997 SODEXHO with star device, filed on November 9, 2000, designating business organization and management consulting services; efficiency experts; research for business purposes; evaluations relating to commercial matters; bill-posting; rental of office machines and apparatus; rental of photocopying machines; accounting; consultancy pertaining to personnel issues; typing services; tax declaration preparation; shop window dressing; demonstration of goods; document reproduction; market studies; organization of exhibitions for commercial or advertising purposes; computer file management; administrative management of hotels; personnel recruitment; payroll preparation; economic forecasting; public relations; secretarial services; telecommunications; press and information agencies; communication via computer terminals; communication via the Internet, namely data transmission via the Internet; telephone services; telephone calls; rental of telecommunication apparatus; rental of modems; rental of facsimile apparatus; rental of telephones; rental of apparatus for sending messages; electronic mail services; computer-aided transmission of messages and images; information on telecommunications; facsimile transmission; transmission of messages; air deodorizing; air purification; air freshening; food and drink preservation; treatment of waste (processing); treatment of water; production of energy; information about treatment of materials; rental of generators; destruction of waste; incineration of waste; recycling of waste in international classes 35, 38 and 40. This international mark is protected in the following countries: ALGERIA, AUSTRIA, AZERBAIJAN, BELARUS, BENELUX, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, RUSSIAN FEDERATION, SINGAPORE, SLOVAK REPUBLIC, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, TURKEY, UNITED KINGDOM, VIETNAM, UKRAINE.
The Panel notes that the registration dates of all of the above referenced registrations predate the date of registration of the disputed domain name by the Respondent.
The Respondent is a corporation with a stated contact address in Las Vegas, United States of America.
The disputed domain name <sodexhoonline.com> was registered by the Respondent with the GKG.NET, INC on July 13, 2002.
The disputed domain name is connected to several websites, inter alia <schoolgirlmagazine.com>, <voyeurteenager.com> and <lolita-online.com> all containing explicit pornographic material and offers for the users to pay for access to more pornographic material.
5. Partiesí Contentions
The Complainant contends that:
- the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith; and
- the disputed domain name <sodexhoonline.com> should be transferred to the Complainant.
Respondent contends that the disputed domain name does not violate any trademark or tradename rights and that the Complainant "has made no Complaint in the more than [four] months since the name was registered, and is clearly making an attempt to hijack a name for which they have no rights or interests."
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
A. Identical or Confusingly Similar
The domain name at issue is <sodexhoonline.com>. Complainant is the holder of a large number of registered trademarks of the word "SODEXHO." The Complainant has provided statements to support the supposition that the disputed domain name and the name and marks of the Complainant are confusingly similar. The Respondent does not contest this supposition.
By incorporating the Complainant's mark with the word "online" - a generic term indicating an Internet presence - at the end of the domain name, the likelihood of confusion cannot be considered diminished but rather aggravated because the name indicates a website containing information or services associated to the trademark SODEXHO. Therefore, the disputed domain name may easily confuse visitors as to the source or origin of the website.
The Panel agrees with the Complainant that by virtue of the Complainantís many trademark registrations and the wordmarkís ungeneric form, the trademark SODEXHO is distinctive and recognizable. The generic term "online" does not diminish the similarities between the trademark and the disputed domain name. The Panel therefore holds that the Complainant has established element (i) of the Policy's Paragraph 4(a).
B. Rights or Legitimate Interests
The Respondent has filed a Response claiming the disputed domain name does not violate any trademark or tradename rights. The Respondent has not in any other way claimed or argued any rights or legitimate interest in the disputed domain name.
In cases such as this, when the Respondent clearly has no obvious connection with the disputed domain name, and the web-sites connected to the disputed domain name do not in any way identify any product, person or service or any other obvious connection to the disputed domain name or the Respondent, the mere assertion from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate such a right or legitimate interest. The Respondent has not demonstrated or argued that it used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of Paragraph 4(a)(ii) of the Policy.
In conclusion the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy's Paragraph 4(a).
C. Registered and Used in Bad Faith
Finally the Panel has to consider the question of the disputed domain name having been registered and used in "bad faith."
Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainantís mark.
The Panel has already established that the mark "SODEXHO" is distinctive and recognizable. It is the Panelís view that it is highly unlikely that the Respondent could have, as a mere coincidence, registered the disputed domain name which is different from the Complainantís own website <sodexhonline.com> by one letter. Furthermore the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. It is not possible to conceive an obvious reason for which the Respondent could legitimately use the domain name. As far as the Panel can see the only present use of the website is to direct visitors to other websites with pornographic material, none of these websites has any discernable connection to the Respondent.
As other panels have concluded before, there is a well-known practice by which website owners can gain commercially by providing links to pornographic websites even though the owner does not actually operate the pornographic website.
It is the Panelís opinion that only because a domain name is identical or confusingly similar to a registered trademark, even such a distinctive and recognizable one as in the present case, it is not necessarily used in bad faith. It is quite possible that a registrant has a plausible and acceptable reason or use for the domain name that does not constitute bad faith. In this particular case however the Respondent, has registered a domain name which he has no plausible legitimate rights to, used it for an obviously commercial purpose with no plausible connection to the Respondents business or person. In the Response that the Respondent has produced it simply states that there are no trademark infringements. The Response does not contain any reasons, evidence or arguments to establish that conclusion. The fact that it has taken the Complainant four months to react on the registration of the disputed domain name does not alter the Panelís view.
The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
In view of the circumstances and facts discussed above, the Panel decides that the disputed domain name is identical and confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently the Panel decides that the domain name <sodexhoonline.com> shall be transferred to the Complainant.
Dated: January 20, 2003