to
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain name <sodeomyway.com> (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2020.
The Center appointed Clive L. Elliott, Q.C., as the sole panelist in this matter on September 24, 2020. 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.
Complainant is a French company, originally called Sodexho Alliance, and founded in 1966. It specializes in foodservices and facilities management, with approximately 470,000 employees across 67 countries.
From 1966 to 2008, Complainant promoted its business under the SODEXHO trade mark and name. In 2008, Complainant simplified the spelling of its mark and name to SODEXO and changed its logo from
|
|
to |
|
Complainant owns numerous domain names corresponding to and/or containing Sodexo or Sodexho. The Sodexo group promotes its activities under several domain names, including: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>. Complainant is globally established, including in Panama where Respondent is located, at “www.sodexo.pa”.
Complainant owns the following registered marks:
|
|
International trade mark, registration no. 964615, registered on January 8, 2008 | ||
|
SODEXO |
International trade mark, registration no. 1240316, registered on October 23, 2014 | ||
|
|
International trade mark, registration no. 694302, registered on June 22, 1998 | ||
|
SODEXO |
European Union Trade Mark, registration no. 008346462, registered on February 1, 2010 | ||
|
|
European Union Trade Mark, registration no. 006104657, registered on June 27, 2008 | ||
|
|
International trade mark, registration no. 1195702, registered on October 10, 2013 | ||
|
|
European Union Trade Mark, registration no. 011138501, registered on January 22, 2013 | ||
|
|
Panama trade mark, registration no. 167186-01, registered on December 12, 2007 |
Complainant provides a range of services under its trade name and mark SODEXO (“Complainant’s Mark”) through on-site services, benefit and reward services, as well as personal and home services.
According to the publicly available WhoIs the Domain Name was registered on July 20, 2020 and resolves to a pay-per-click webpage.
Complainant states that it has a strong reputation and is widely known all over the world.
Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it reproduces Complainant’s Mark with the removal of the letter “x”. The deletion of the letter “x” only corresponds to a misspelling of Complainant’s Mark. The addition of the words “my way” do not significantly affect the appearance or pronunciation of the Domain Name. Further, the risk of confusion or association with Complainant’s Mark is stronger as Complainant uses the expression “MyWay by Sodexo” for a particular application on its website. Due to the almost identical reproduction of Complainant’s Mark and the expression “my way”, the public are likely to believe that the Domain Name comes from the SODEXO group or is linked to Complainant.
Complainant understands that Respondent is using the Domain Name as a parking page featuring links relating to CESU (vouchers and cards services) and connecting to Complainant’s competitors’ websites.
Complainant contends that Respondent, who has registered the Domain Name with a privacy service for protection of personal data, has no rights to the Domain Name as it is not commonly known by the Domain Name, nor does Respondent have any affiliation, association, sponsorship or connection with Complainant.
Complainant asserts that due to the well-known reputation of Complainant’s Mark, particularly in Panama where Respondent is located, Respondent most likely knew of Complainant’s existence. The word “sodexo” is imaginary and it would not be chosen or any variation thereof unless seeking to create an association with Complainant.
Complainant further asserts that Respondent is using the Domain Name by exploiting the confusion with the well-known Complainant’s Mark to attract Internet users and inciting them to click on third party commercial links, for commercial gain, and in turn creating a dilution of Complainant’s Mark.
Respondent did not reply to Complainant’s contentions.
Complainant is a French company. It has traded since 1966. It now operates in approximately 67 countries around the world, including in Panama, where Respondent is located. Complainant provides foodservices and facilities management services. In 2008, Complainant changed its trade mark and name from Sodexho to its current form Sodexo. Complainant’s Mark is widely registered, including in Panama. As detailed above, these trade mark registrations precede the registration of the Domain Name, which was registered recently, on July 20, 2020.
Complainant has established that it has rights in Complainant’s Mark and that these rights predate Respondent’s registration of the Domain Name.
Complainant argues that the Domain Name reproduces Complainant’s Mark in its entirety, followed by the words “my way”, which addition does not significantly affect the appearance or pronunciation of the Domain Name. The Panel agrees. By adopting the key element SODEXO, which on the face of it, appears to be fanciful (or as Complainant puts it “imaginary”), the Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the Panel finds that:
a) Complainant has rights in respect of Complainant’s Mark; and
b) the Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
In terms of assessing whether Respondent has rights or legitimate interests in the Domain Name it is appropriate to consider the way Respondent uses the Domain Name. In the absence of a response the Panel is reliant upon Complainant’s statements of fact and submission. In this regard, Complainant asserts that it uses the expression “MyWay by Sodexo” for a particular application on its website. Given the apparent fanciful nature of Complainant’s Mark and the use of the expression “MyWay by Sodexo”, Internet users are likely to assume that there is some sort of association or connection between Complainant and Respondent.
In the absence of any response from Respondent, or reliance on any license or authorisation, the Panel infers that the Domain Name is likely to create the mistaken impression that the Domain Name and/or Respondent is somehow connected to or associated with Complainant and/or Complainant’s Mark. Respondent has no legitimate interest in registering and/or using the Domain Name to hold itself out in this manner.
Based on the above, the Panel is satisfied that the second element of the Policy has been met.
Complainant asserts that given its international reputation and trading presence in Respondent’s home territory Panama, Respondent most likely knew of Complainant’s existence. There is merit in this argument, given the fanciful nature of Complainant’s Mark, along with the assertion that Complainant has used the expression “MyWay by Sodexo” on one of its applications. There is no evidence that Respondent is commonly known by the Domain Name, nor that it has any affiliation, association, sponsorship or connection with Complainant.
Finally, Complainant notes that Respondent has registered the Domain Name with a privacy service for protection of personal data. This is a factor that can and under these circumstances should be taken into account.
Given the above, the Panel finds that Respondent must have known of Complainant and its business activities and registered and is using the Domain Name to take bad faith advantage of Complainant’s Mark.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sodeomyway.com> be transferred to Complainant.
Clive Elliott QC
Sole Panelist
Date: October 12, 2020
