WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Shahzan / PrivacyProtect.org
Case No. D2013-1308
1. The Parties
Complainant is SODEXO of Issy-Lesmoulineaux, France, represented by Areopage, France.
Respondent is Shahzan of Shah Alam, Selangor, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <sodexogs.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2013. On July 19, 2013, Complainant filed an amended Complaint. On July 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on July 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on August 26, 2013. 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 contends as follows. Complainant is a French company which was founded in 1966. Its former name was Sodexho Alliance. It is one of the largest food services and facilities management companies in the world, with 420,000 employees across 80 countries. For the fiscal year 2012, revenues reached 18 billion Euros.
Complainant has been named among the world’s “Most Admired Companies” in Fortune Magazine's 2013 corporate reputation survey. Among leading global companies in the “Diversified Outsourcing Services” sector, Complainant ranked number one overall, and also in relation to the categories of Innovation, Social responsibility, Financial soundness, Long-term investment and Global competitiveness”.
SODEXO provides a wide range of services under its trade mark SODEXO through an offer of on-site service solutions, motivation solutions and personal and home services. The trade mark SODEXO is used in connection with the following activities intended to improve the quality of daily life as shown in Sodexo’s website, “http://www.sodexo.com/en/services/quality-life-services.aspx”. The services provided include:
(i) Restaurant and catering services, facility management services including a wide range of on-site services such as transport, construction management, reception, technical maintenance, leisure cruises, housekeeping, and rehabilitation services.
(ii) Issuance of service vouchers and cards for private and public organizations in three service categories:
- Employee benefits to attract, engage and retain employees (such as restaurant vouchers, transport vouchers, gasoline vouchers, etc.);
- Incentives and recognition to help organizations reach their qualitative and quantitative objectives (gift vouchers, gift boxes, etc.);
- Public benefits to manage and control the distribution of aid and public subsidies.
(iii) Personal and home services including childcare, tutoring and adult education, concierge services and home care for dependent persons.
Complainant is also the registrant of numerous domain names corresponding to and/or containing the trade mark SODEXO. The Sodexo group promotes its activities under the following domain names: <sodexo.com>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <uk.sodexo.com>, etc. The SODEXO/ SODEXHO mark has been continuously and extensively used and/or protected in 80 countries.
The trademark SODEXO/ SODEXHO has a strong reputation and is widely known all over the world. Complainant gave evidence of registrations of the trademark SODEXHO (e.g. International registration Nos. 350727 and 1297148) in Classes 42 and 43, and SODEXO (e.g. Community Trademark registration Nos. 008346462 and 006104657 covering Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45).
Complainant also has registered a stylized design version of the SODEXO trademark () under International trademark registration No. 964615 in International classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45. The trademark is protected in the following jurisdictions: Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Switzerland, China, Algeria, Egypt, the European Community, Islamic Republic of Iran, Iceland, Japan, Kyrgyzstan, Democratic People’s Republic of Korea, Republic of Korea, Kazakhstan, Lesotho, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, Republic of Namibia, Norway, Serbia, Russian Federation, Singapore, Turkey, Ukraine, the United States of America, Uzbekistan and Vietnam.
Complainant’s SODEXHO trademark has been recognized as well known. (See Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287, at paragraph 6.27 wherein the panel stated that “The trademark SODEXHO and SODEXHO PASS are well-known all over the world and Respondent obviously knew this famous trademark and Complainant’s business”.)
The disputed domain name was registered on March 15, 2013.
5. Parties’ Contentions
Firstly, Complainant asserts that the disputed domain name is identical or confusingly similar to the marks SODEXO and SODEXHO in which it has rights. The disputed domain name identically reproduces Complainant’s mark SODEXO and quite identically reproduces its other mark, SODEXHO, with the addition of the letters “gs”. These letters correspond to the abbreviation of “Global Services”. The presence of the letters “gs” in the disputed domain name does not serve to distinguish it from Complainant’s marks. The mark SODEXO remains dominant in the disputed domain name as the letters “gs” are only perceived as an acronym for the descriptive expression “global services”.
The addition of a generic or descriptive term to a mark will not alter the fact that the disputed domain name at issue is confusingly similar to the mark in question. Reference was made to these precedent decisions in support: 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; Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215; Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; eAuto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409.
The incorporation of the well-known mark SODEXO in the disputed domain name will lead the public to believe that the disputed domain name belongs to the SODEXO group. The risk of confusion is all the more likely as it leads Internet users to a false website offering freight services under a fabricated name, Sodexo Global Services, but looking like an official SODEXO website.
The likelihood of confusion for Internet users is increased by the fact that:
(i) The expression “Global Services”, symbolized by the letters “gs” in the disputed domain name, can be understood by Internet users as “facility management services” which are the core business of Complainant;
(ii) The name Sodexo Global Services corresponds to the corporate and business name of a UK subsidiary of Complainant, i.e. Sodexo Global Services UK Limited; and
(iii) the Sodexo group also offers in the United Kingdom transport services which are very close in nature to freight services.
Secondly, Respondent has no rights nor legitimate interests in the disputed domain name as he/she has no earlier rights to the marks SODEXHO and SODEXO. Respondent has not been commonly known by the disputed domain name prior to the adoption and use by Complainant of the corporate name and trade marks SODEXHO/SODEXO. Respondent does not have any affiliation, association or connection with Complainant and has not been authorized, licensed or otherwise permitted by Complainant or by any subsidiary or affiliated company to register and use the disputed domain name.
Due to the well-known character and reputation of the SODEXHO/SODEXO mark, it is not likely that Respondent registered the disputed domain name without knowing the existence of the SODEXO group and of the SODEXHO/SODEXO mark. Respondent perfectly knew of the rights Complainant owns worldwide in the SODEXHO / SODEXO mark and registered the disputed domain name in bad faith. Complainant also believes that when registering and using the disputed domain name, Respondent wanted to benefit from the reputation in the SODEXHO/SODEXO mark and thereby attract Internet users. Respondent knew of the existence of Complainant’s said UK subsidiary and chose the disputed domain name to create a false website and to confuse Internet users. Respondent’s bad faith is evidenced by its website at “www.sodexogs.com” which looks like an official website of Complainant for freight services and from the fake company name, Sodexo Global Services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove each of the following:
(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) That 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 Panel finds that Complainant has established that it has registered and common law rights in the trade marks SODEXHO and SODEXO.
The Panel further finds that the disputed domain name is confusingly similar to Complainant’s said marks. The SODEXO mark is incorporated in its entirety in the disputed domain name and is the dominant element therein. The SODEXO trade mark is clearly identifiable within the disputed domain name. It has been well-established in numerous UDRP decisions that the generic top level domain “.com” may be disregarded when considering the issue of identity or confusing similarity. Whilst the Panel is of the view that the letters “gs” are not necessarily an abbreviation for “global services”, it does appear in the context of this case that Respondent’s intention has been for these letters to refer to “global services”. This is reflected on the pages of Respondent’s website. Be that as it may, the essential point for consideration is whether these letters serve to differentiate the disputed domain name from Complainant’s trade marks. The letters “gs” appear at the end of the letters “sodexo” in the disputed domain name and constitute a non-distinctive element in the overall composition of the disputed domain name. The Panel takes the view that the addition of the letters “gs” do not serve to remove the confusing similarity with Complainant’s reputed SODEXHO and SODEXO trade marks.
In the premises, the Panel finds the disputed domain name to be confusingly similar to the SODEXHO and SODEXO trade marks that Complainant has rights in.
Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainant’s SODEXHO and SODEXO marks have been extensively used and registered for many years and the Panel is prepared to accept Complainant’s assertion that its marks are well known. On the other hand, the disputed domain name was only recently registered and there is no evidence that Respondent has been commonly known by the disputed domain name. Respondent has not been licensed nor authorized by Complainant to use the SODEXO mark or to register and use the disputed domain name. The evidence submitted by Complainant shows Respondent’s website to which the disputed domain name resolves has been designed to look like that of Complainant’s and/or being associated with it and/or its UK subsidiary. Respondent’s website has been used to offer transport, freight and delivery services which are services covered by Complainant’s trademark registrations.
Respondent’s silence in these proceedings and failure to take advantage of the opportunity presented to show that it has rights or legitimate interests in the disputed domain name or that it has been engaged in a bona fide offering of services, are factors which the Panel has noted and from which it draws a negative inference.
In the circumstances, the Panel finds no basis for making a finding other than that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name is confusingly similar to Complainant’s widely-protected and well-established SODEXHO and SODEXO marks. It can be deduced from Respondent’s website at “www.sodexogs.com” that Respondent was aware of Complainant and of its SODEXO trade mark. Complainant made reference in its submission to Société Générale v. NA/Frank Agbalajobi, WIPO Case No. D2004-0916 - wherein the panel held that:
“(...) the overwhelming similarity between the Respondent’s website and that of the Complainant, the frequent references to the Société Générale Group throughout the Respondent’s website, the use of an identical logo to that of the Complainant and the frequent use of the trademark SOCGEN (in capitals) throughout the website are unmistakable signs of an attempt by the Respondent to create a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent’s website which is linked to the domain name. The Panel concludes that the Respondent not only knew of the Complainant’s trademark SOCGEN when it registered the disputed domain name but that it effected such registration in a deliberate attempt to generate or to divert business to itself by causing confusion as to the source or affiliation of the Respondent’s website.”
The Panel agrees that the circumstances of the instant case are analogous in nature and draws the same conclusion, viz. that Respondent’s registration and use of the disputed domain name were calculated to attract and mislead Internet users to the website and to ride off the reputation of Complainant and its marks. Visitors to Respondent’s website would foreseeably be deceived into thinking and expecting that the website is that of Complainant’s or endorsed by them, and/or is related to Complainant’s UK subsidiary. These circumstances amount to evidence of bad faith registration and use, per paragraph 4(b)(iv) of the Policy.
The Panel would also reiterate the principle established in previous UDRP decisions that the registration of a domain name incorporating a widely-recognized or well-known trade mark by someone who has no connection whatsoever with the trade mark is a clear indication of bad faith: see Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Respondent had the opportunity to contradict Complainant’s case with evidence to support a legitimate and rightful claim to the disputed domain name but failed to.
In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
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 <sodexogs.com> be transferred to Complainant.
Date: September 3, 2013