WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Cinny Michael

Case No. D2021-1746

1. The Parties

Complainant is Sodexo, France, represented by Areopage, France.

Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Cinny Michael, United States of America (“United States or USA”).

2. The Domain Name and Registrar)

The disputed domain name <sodexoedu.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2021, the Registrar 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 Complainant on June 7, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 8, 2021.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 20, 2021. 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.

4. Factual Background

Complainant is Sodexo, a French company founded in 1966, specialized in foodservices and facilities management. Complainant provides a wide range of on-site services, benefit and reward services as well as personal and home services under its trade name and trademark SODEXO. Sodexo is one of the largest companies in the world, with 420 000 employees serving 100 million consumers in 64 countries.

In light of the valuable goodwill and reputation achieved by Sodexo, Complainant has filed several International trademark registrations, in 64 countries where the company offer its services, to ensure its rights over the exclusive use of the brand SODEXO. Some examples are listed below:

Complainant is also the owner of several domain names containing the trademark SODEXO, including the domain name <sodexo.com>, which Complainant owns since October 9, 1998. Meanwhile, the disputed domain name <sodexoedu.com> was registered by Respondent on March 10, 2021 – many years after the registration of Complainant’s trade name, domain name <sodexo.com> and cited trademarks. The disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name <sodexoedu.com> is confusingly similar to its registered trademark SODEXO, as well as with its registered domain name <sodexo.com>. This is because the disputed domain name incorporates the sign SODEXO in its entirety and, therefore, will likely be associated with the mentioned trademark regardless the existence of the abbreviation “edu” in the disputed domain name.

According to Complainant, the abbreviation “edu” in the disputed domain name <sodexoedu.com> is perceived by the public as an abbreviation of the word “education”, so such domain name would mean “SODEXO Education”. In this regard, Complainant notes that the addition of the abbreviation “edu” would be insufficient to avoid a finding of confusing similarity with Complainant’s trademark, since despite being a descriptive term, SODEXO provides many services in schools and other educational establishments. This way, Complainant alleges that internet users would be easily led to think that the disputed domain name <sodexoedu.com> is owned by the Sodexo Group or anyhow linked to it, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark SODEXO nor any permission to register the trademark as a domain name.

This is because Respondent is not commonly known by the term SODEXO, does not own a business name or a trademark registration composed by such trademark and is neither acting in a bona fide offer of products or services. In Complainant’s opinion, the fact that the trademark SODEXO is not a dictionary word, but rather a highly distinctive and well-known name, reinforces the argument that Respondent’s interest in the disputed domain name has an illegitimate nature, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

At last, Complainant states that the disputed domain name <sodexoedu.com> was registered and is being used in bad faith.

Complainant affirms that since the sign SODEXO is not a dictionary word, but purely fanciful, nobody could legitimately choose this word or any variation of it, unless seeking to create an association with Complainant’s activities under the trademark SODEXO.

In addition, Complainant claims that the well-known character and reputation of the trademark SODEXO makes very unlikely that Respondent did not know the company when registered the disputed domain name. This way, Complainant says that Respondent would be aware that he had no rights or legitimate interests in the disputed domain name and only registered it for the purpose of creating confusion with Complainant’s trademark, seeking to divert or mislead third parties for its own benefit.

ln conclusion, Complainant also alleges that the disputed domain name, which has been recently created, does not have any active content, constituting a passive holding, what does not prevent a finding of bad faith.

Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

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

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

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

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that owns prior trademark rights in SODEXO registered in many jurisdictions, including in the United States where Respondent is established, and that the disputed domain name <sodexoedu.com> incorporates such trademark in its entirety, with the sole addition of term “edu”, which does not prevent the finding of a confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Thus, the Panel finds that the disputed domain name <sodexoedu.com> is confusingly similar to Complainant’s trademark.

Therefore, the Panel considers the requirement of the first element of paragraph 4(a) of the Policy satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <sodexoedu.com>.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark SODEXO at the time of registration of the disputed domain names, taking into consideration its notoriety, especially in the United States, and the fact that the disputed domain name was registered by Respondent on March 10, 2021, many years after the registration of Complainant’s trade name, domain name <sodexo.com> and trademarks listed in the Point 4 of this decision. Therefore, evidence shows that Respondent was likely aware of Complainant and its well-known trademark SODEXO, and registered the disputed domain name to take advantage of Complainant’s trademark.

In addition, the fact that the disputed domain name is inactive does not preclude a finding of bad faith under the doctrine of passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As considered in the referred decision, some relevant factors must be considered in applying the passive holding doctrine, including: (i) the degree of distinctiveness or reputation of complainant’s mark, (ii) the failure of the respondent to submit a response, (iii) respondent’s hiding its identity or using false contact details and (iv) the lack of any circumstance capable of demonstrating that respondent is using the domain name in good faith.

Applying these factors to the present case, it can be concluded that (i) Complainant’s trademark SODEXO is distinctive and well-known; (ii) Respondent did not reply to Complainant’s contentions; (iii) Respondent has sought to hide its identity by using a privacy service; and (iv) there is any evidence that could lead the Panel to think that the disputed domain name is being used legitimately and in good faith. Therefore, Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith .

Given all the above-mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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

Gabriel F. Leonardos
Sole Panelist
Date: August 3, 2021