The Complainant is SODEXO, France, represented by Dejade & Biset, France.
The Respondent is Texas International Property Associates - NA NA, United States of America, represented by Gary Wayne Tucker, United States of America.
The disputed domain names <sodexomail.com> and <sodexoeducation.com> are registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 5, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On September 8, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 18, 2008. The Center verified that the Complaint together with the amendment to 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 September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 9, 2008. The Response was filed by email with the Center on October 10, 2008.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on October 29, 2008. 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 French company SODEXO, which changed its name from SODEXHO ALLIANCE to SODEXO in January 2008, offers food and facilities management services, as well as service vouchers and cards. The Complainant is the mother company of the SODEXO Group, which has business activities on a worldwide scale.
The Complainant owns, among many others, the following trademark registrations:
- French trademark registration for SODEXHO no. 1'249'935 (filed on November 4, 1983) in classes 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41, 42, 43, 45;
- US trademark registration for SODEXHO (with star device) no. 2'318'133 (filed on July 8, 1998) in classes 37, 39, 41 and 42.
The domain name <sodexomail.com> was registered on February 19, 2005. The domain name <sodexoeducation.com> was registered on December 6, 2005.
The Complainant sent a cease and desist letter to the Respondent on February 1, 2008. On May 28, 2008, the Respondent informed the Complainant of its intention to assign the domain names to the Complainant. The Complainant confirmed its agreement to the proposed transfer on June 10, 2008. Since then, despite several reminders, the Respondent never replied.
At the time the Complaint was filed, the domain names resolved to a parking site “www.ndparking.com”, that featured links to third-party websites, some of which were in competition with the Complainant's activities.
The Respondent has been named as a respondent in more than 70 UDRP procedures.
The Complainant contends that the domain names are similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the domain names and that the domain names were registered and used in bad faith. The Complainant accordingly requests the transfer of the domain names.
In its Response filed one day late, the Respondent offers a “unilateral consent to transfer” without admitting to any of the three elements of the Policy. The Respondent requests that the Panel order the immediate transfer of the disputed domain names.
The Panel must first decide whether it will consider the Respondent's late Response. The deadline to file the Response was October 9, 2008. The Respondent sent its Response by email to the Center on October 10, 2008. The Respondent alleged that it had experienced “computer problems” which prevented it from sending the response in a timely fashion.
In the event of a late response, the Panel's default course of action would be to proceed to a decision based only on the complaint, according to paragraph 14(a) of the Rules. The Panel may however consider the response if “exceptional circumstances” exist. Also, panels have taken late responses into account on the basis of the Panel's general powers pursuant to paragraph 10(b) of the Rules. In particular, responses that were submitted late were taken into account when the response was late only by one day (see AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485).
In the present case, the response was only one day late. The Panel decides therefore to consider it.
The Panel must further decide whether, in view of the Respondent's consent to the transfer of the domain names, it remains necessary to examine whether the conditions of paragraph 4(a) of the Policy are fulfilled. There are two currents of opinion in this respect. A number of panels have considered, in cases involving the same Respondent, that the Respondent should not be allowed to avoid adverse findings or comments, and have proceeded with the UDRP analysis (see President and Fellows of Harvard College v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0597, Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733, Hess Natur-Textilien GmbH v. Texas International Property Associates – NA NA, WIPO Case No. D2008-1051, AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230). Other panels have held on the other hand that a review of the facts supporting the claim was unnecessary when the Respondent consented to the transfer and have put forward the need for “due expedition” as provided in paragraph 10(c) of the Rules (National Osteoporosis Foundation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0913, Harte-Hanks, Inc. v. Texas International Property Associates, WIPO Case No. D2008-1281).
This Panel's view is that the Respondent should not be allowed to escape adverse findings. The Panel will therefore proceed to review the case and assess whether the conditions of paragraph 4(a) of the Policy are fulfilled.
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the 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) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
The domain names <sodexomail.com> and <sodexoeducation.com> consist of the fantasy term “sodexo”, to which was added a term of the common language, i.e. “mail” and “education”.
The element “sodexo” forming the beginning of the domain names is almost identical to the trademark SODEXHO of the Complainant. The only difference is the absence of the letter “H” in the domain names. This letter plays only a minor role in the general impression produced by the Complainant's mark, as it appears in the middle of the mark, and also as it is not audible when the mark is spoken aloud.
The presence of the common terms “mail” and “education” in the domain names is not sufficient to distinguish them from the Complainant's mark. It is widely admitted that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733, Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks)Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei,, WIPO Case No. D2008-0101).
The Panel holds therefore that the domain names are confusingly similar to trademarks in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant states that it has not authorized the Respondent to register or use the domain names.
In its Response, the Respondent has not asserted any rights or legitimate interests in respect of the domain names, but requested that the Panel order the transfer of the domain names to the Complainant. The Panel takes this as an acknowledgment that the Respondent has no rights or legitimate interests in respect of the domain names.
The condition of paragraph 4(a)(ii) is therefore satisfied.
The Respondent used the domain names to divert Internet traffic to websites unrelated to the Complainant, some of which offered competing goods or services. The Respondent obviously derived income on a pay-per-click basis from the links listed in the parking site to which the domain names resolved. This constitutes bad faith use of the domain names in application of paragraph 4(b)(iv) of the Policy (see AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
Moreover, the Respondent has been involved as a respondent in over 70 UDRP cases so far, basically all of which were decided in favor of the complainants (in only one case, the complaint was denied in part, Vectorvest Inc. v. Texas International Property Associates, WIPO Case No. D2008-0426). The Panel finds that the Respondent's behavior is constitutive of a pattern within the meaning of paragraph 4(b)(ii) of the Policy.
In conclusion, the Panel finds that the domain names were registered and used in bad faith and that the condition of paragraph 4(a)(iii) is satisfied.
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 names <sodexomail.com> and <sodexoeducation.com> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Dated: November 17, 2008