The Complainants are Sodexo and Groupama of France, represented by Dejade & Biset, France.
The Respondent is M5 Industries, Angella Benneth of Canada.
The disputed domain name <groupamabysodexo.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On February 23, 2010, Name.com LLC 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 February 23, 2010, 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 February 25, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2010.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 31, 2010. 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 Complainant Sodexo, which has changed its name from Sodexho Alliance to Sodexo is the mother company of the Sodexo group. The Sodexo group has business activities on a world-wide scale under the trade names and marks SODEXHO and SODEXO in the following fields:
- Food and facilities management services;
- Issuing of service vouchers and cards.
The Complainant Sodexo owns valid registrations for the marks SODEXHO and SODEXO in numerous countries.
The Complainant Sodexo is also the registrant for quite a number of domain names corresponding to and/or containing the “Sodexho” or “Sodexo” names.
The Sodexo group promotes its activities among others under the following domain names: <sodexho.com>, <sodexo.com>, <sodexho.eu>, <sodexo.fr> and <sodexho.fr>.
The Complainant Groupama is a mutual insurance company created on the initiative of farmers at the beginning of the last century. In 1987, an insurance group unified called Groupama was created. The Complainant Groupama renders its business activities under the trade names and marks GROUPAMA in the following fields:
- Life and health insurance;
- Property and casualty insurance;
- Financial and banking services.
The Complainant Groupama is the owner of several marks GROUPAMA.
The Complainant Groupama has registered several domain names including “groupama”. The Complainant Groupama promotes its activities among others under the following domain names: <groupama.com>, <groupama.fr> and <groupama.eu>.
The Complainants have a common grievance against the Respondent, as the disputed domain name <groupamabysodexo.com> is composed of trademarks and trade names of each of the Complainants. The Complainant Groupama is one of the clients of the Complainant Sodexo as the latter manages the company restaurants of the former, and these two companies have a common commercial project consisting of a website. The domain names <groupamabysodexo.fr>, <groupama-restosodexo.com> and <groupama-restosodexo.fr> were registered in the name of the company Image Point Com on behalf of the Complainants. This company, which is a communication's agency, has been mandated by the Complainants to register the above mentioned domain names intended to connect to a website that would allow employees of Groupama to recharge their badges online and view menus of the company restaurants managed by Sodexo.
These facts are asserted and evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panel is satisfied that the documents submitted by the Complainants truthfully reflect the factual circumstances of the case.
The disputed domain name was registered on August 28, 2009.
The Complainants' trademark registrations predate the registration of the disputed domain name.
The Complainants claim that:
1) The disputed domain name <groupamabysodexo.com> is merely a combination of the GROUPAMA and SODEXO trademarks in their entireties with the addition of the preposition “by”, which creates a link between GROUPAMA and SODEXO.
Concerning the addition of a word, such as “by” in the disputed domain name, the Complainants evidence that previous WIPO UDRP panels have decided in several decisions that such an addition will not avoid confusing similarity of the disputed domain name to the trademark (General Electric Company v. Forddirect.com, INC., WIPO Case No. D2000-0394; National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. 2001-1185).
The Complainants point out that they have decided not to use the domain name <groupamabysodexo.fr>, contrary to the project foreseen at the date of its registration, in order to avoid any likelihood of confusion for the consumer with the disputed domain name <groupamabysodexo.com>.
2) The Respondent has no rights or legitimate interests in the disputed domain name as it has no rights on GROUPAMA and/or SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainants' rights. The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainants of the corporate name, business names and marks GROUPAMA, SODEXHO and SODEXO. Moreover, the Respondent does not have any affiliation, association, sponsorship or connection with the Complainants and has not been authorized, licensed or otherwise permitted by the Complainants or by any subsidiary or affiliated company to register the disputed domain name and to use it.
3) The use of the disputed domain name cannot be considered as a legitimate noncommercial or fair use of the Complainants' marks GROUPAMA, SODEXHO and SODEXO.
4) Due to the well-known character of the GROUPAMA, SODEXHO and SODEXO marks, it is hardly likely that the Respondent registered the disputed domain name without knowing of the existence of the Complainants' marks; that it may have legitimately thought it would be able to lawfully use the disputed domain name when registering it; or that the choice of this domain name results from a mere coincidence considering the very distinctive and arbitrary character of the coined marks GROUPAMA and SODEXO.
5) The Complainants therefore assume that the Respondent perfectly knew pf the Complainants' rights in GROUPAMA, SODEXHO and SODEXO marks world-wide, among others in United States and Europe, and was therefore in bad faith when registering or acquiring the disputed domain name.
6) The Complainants infer that the Respondent might have been aware of the common commercial project of website of the Complainants as the disputed domain name was registered only three days prior to the registration of the <groupamabysodexo.fr> domain name on August 31, 2009 by Image Point Com on behalf of the Complainants.
7) The expression “groupamabysodexo” is so obviously connected with two well-known multinationals that its very use by someone with no connection with either the Complainant reveals opportunist bad faith. Particularly so, when the domain name registration was effected almost exactly at the time the two Complainants had a common website project.
8) The Respondent has registered the disputed domain name in order to prevent the owners of the trademarks GROUPAMA and SODEXO from reflecting the marks in a corresponding domain name.
9) The fact that the Respondent did not make any financial proposal to the Complainants' request to purchase the disputed domain name, but only specified “don't forget to add all the admin work and time I'd spend to transfer you the domain” as an apprent blackmail bid, corroborates this bad faith.
10) Despite receipt of a cease and desist letter the Respondent did not withdraw the disputed domain name.
11) The registration and use of the disputed domain name also tarnishes and dilutes the GROUPAMA, SODEXHO and SODEXO marks by confusing consumers as well as potential consumers and interferes with GROUPAMA and SODEXO's business by frustrating attempts by Internet users to reach the Complainants' official websites. The Complainants felt that the risk of confusion was high enough that the project of website common to the Complainants has been abandoned.
The Complainants request the Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant SODEXO.
The Respondent did not reply to the Complainants' contentions.
The Complainants have established that they have prior rights in the trademarks SODEXO and GROUPAMA and have stated that the addition of the generic term “by” to the trademarks is not sufficient to avoid confusion. As the marks of both Complainants are contained in the disputed domain name in this case, the Panel finds that they are properly joined as co-complainants. See Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052.
In order to substantiate this claim, the Complainants' have quoted a number of previous UDRP decisions, basically affirming that the addition of a generic term to a trademark does not prevent a domain name from being confusingly similar to the trademark.
This Panel agrees with the Complainants' contention and previous decisions, which have affirmed that the addition of a generic term is not sufficient to avoid confusion; indeed, it is this Panel's opinion that in some circumstances (as in the present case) this addition can even increase the chances of confusion.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has no connection or affiliation with the Complainants, which have not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainants' trademarks. The Respondent does not appear to be commonly known as “Sodexo”, “Groupama”, “Groupamabysodexo” or by a similar name and it has not alleged any facts or elements to justify prior rights and/or legitimate interest in the disputed domain name. The Respondent does not appear to make any legitimate use of the domain name for noncommercial activities, nor to use it in connection with a bona fide offering of goods or services. Finally, the Respondent has not replied to the Complaint, proved or at least alleged in any other ways any concurrent right in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the very distinctive and arbitrary character of the names GROUPAMA and
SODEXO, the notoriety of the Complainants' trademarks, their extensive use also on the web through numerous domain name registrations containing and/or corresponding to the Complainants' trademarks and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainants' trademarks when it registered the disputed domain name.
The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the Complainants' trademarks and activities at the time of the registration of the disputed domain may be considered an inference of bad faith See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409 “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.
In addition, the Panel agrees with the Complainants' assertion that
“The expression ‘groupamabysodexo' is so obviously connected with two well known multinationals that its very use by someone with no connection with either Complainant reveals an opportunist bad faith. Particularly so, when the domain name registration was effected exactly when the two Complainants have a common project of website”.
As was stated by the panel in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, UDRP jurisprudence has dealt with similar situations before with the same result. Namely, that opportunistic registration of the name or likely name of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use.
In this sense:
Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446. Registration of the domain name <monsantopharmacia.com> was made shortly after two multinational pharmaceutical companies announced a merger;
ABB Asea Brown Boveri Limited v. Aseabrownboveri, WIPO Case No. D2001-0107. Likewise, the disputed domain name combined the registered marks of two merging multinationals;
SMS Demag AG v. Seung Gon, Kim, WIPO Case No. D2000-1434. The disputed domain name combining the marks of two merging multinationals had been registered by the respondent two days after the merger was announced;
A.P. Møller v. Web Society, WIPO Case No. D2000-0135. Merger negotiations began in autumn 1998, and the respondent registered a domain name combining the marks of the merging entities on December 14, 1998. He then offered to sell the names to the complainant at a high price. The respondent held the name passively; and
Repsol YPF, S.A. v. COMn.com, WIPO Case No. D2001-0741. The complainant was an amalgam of two oil, chemical and gas companies – one Spanish (Repsol) the other Argentinean (YPF). The respondent's explanation that the disputed domain name <repsolypf.com> was a translation of Korean words meaning “about pine needle” was rejected as straining credulity. The website was not developed. The complainant had a registered mark in the Republic of Korea and some commercial presence in that country.
Moreover, the Respondent, in reply to the cease and desist letter of the Complainants' representatives, did not assert or even allege any rights or reasons to have chosen the disputed domain name.
The Respondent has not denied the Complainants' assertions of bad faith, has not given any justification for the registration of the domain name, nor substantiated or at least alleged any concurrent right or legitimate interest to the disputed domain name.
Finally, it appears that the Respondent is passively holding the disputed domain name at this time and therefore preventing the Complainants from reflecting their marks in a corresponding domain name.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainants have satisfied paragraph 4(a)(iii) of the Policy.
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 name <groupamabysodexo.com> be transferred to the Complainant Sodexo.
Dated: April 12, 2010