WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SODEXO v. SODEXHO Catering, CID-300335SOD, CID-512981SOD, Ilker Sirin

Case No. D2013-1950

1. The Parties

The Complainant is SODEXO of Issy-Les Moulineaux, France, represented by Areopage, France.

The Respondent is SODEXHO Catering, CID-300335SOD, CID-512981SOD, Ilker Sirin of Girne, Cyprus.

2. The Domain Names and Registrars

The disputed domain names <sodexhocatering.com> and <sodexhogroup.com> are registered with FBS Inc. (the “First Registrar”) and Nics Telekomünikasyon Ticaret Ltd. Şti. (the “Second Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to the Second Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2013, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 29, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On November 29, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

On December 9, 2013, the Center requested clarification from the Second Registrar concerning the apparent transfer of the disputed domain name <sodexhocatering.com> registration to another domain name holder (registrant) and the First Registrar. On December 12, 2013, the Second Registrar confirmed such change.

On December 16, 2013, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the disputed domain name <sodexhocatering.com>. On December 17, 2013, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 24, 2013, the Center sent an email communication to the Complainant inviting it to add the First Registrar as the registrar of the disputed domain name <sodexhocatering.com>. The Complainant filed an amended Complaint on December 24, 2013.

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 December 27, 2013. On December 27, 2013, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2014.

The Center appointed Kaya Köklü as the sole panelist in this matter on January 24, 2014. 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

The Complainant is a renowned French company founded in 1966 that is specialized in restaurant and catering services. The Complainant’s group of companies is active globally with about 420,000 employees on more than 34,000 sites in 80 countries. The Complainant changed the spelling of its firm name in 2008 from “Sodexho” to “Sodexo”.

The Complainant is the longstanding owner of the trademarks SODEXHO and SODEXO, which are registered in a large number of jurisdictions. Both trademarks cover protection for a variety of products and services including catering and facility management services.

Furthermore, the Complainant holds and operates various domain names incorporating the SODEXO trademark, including <sodexo.com> and <sodexo.fr>.

The identity of the Respondent remains unclear. It appears that the Respondent is a catering service company and/or an individual from Cyprus.

The disputed domain name <sodexhocatering> was registered on December 7, 2010. The disputed domain name <sodexhogroup.com> was registered on January 15, 2013.

The provided documents in the current record indicate that the disputed domain names were actively used to offer catering services under fake company names incorporating the Complainant’s trademark SODEXHO. The disputed domain names are currently inactive.

The Complainant tried to contact the Respondent by its Turkish attorneys on September 10, 2013 through a cease and desist letter requesting a voluntary transfer of the disputed domain names. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to the Complainant’s SODEXO and SODEXHO trademarks.

The disputed domain names fully incorporate the Complainant’s SODEXHO trademark. The Complainant further believes that the disputed domain names are also confusingly similar to the Complainant’s SODEXO trademark.

The Complainant argues that the main difference between the disputed domain names and the Complainant’s trademarks is that the disputed domain names additionally comprise the generic terms “group” and “catering”. The Complainant is of the opinion that the addition of these generic terms does not negate the confusing similarity with its trademarks, as both generic terms are related to the Complainant’s activity.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademarks, neither its SODEXHO trademark, not its SODEXO trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the SODEXO or SODEXHO trademarks in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly believes that due to the wide recognition of the SODEXO and SODEXHO trademarks, the Respondent was or should have been aware of the trademarks when registering the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the administrative proceedings

To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English, as the Respondent is probably capable to read, write and understand the English language, in particular as it has registered the disputed domain names incorporating English terms.

B. Cyberflight

After the Complaint was filed with the Center, the Respondent transferred the disputed domain name <sodexhocatering.com> from the Second Registrar to the First Registrar and changed its contact details, although the Second Registrar confirmed to the Center that this disputed domain name had been locked. The Respondent’s conduct raises concern of cyberflight.

“Cyberflight” is an attempt to delay or even escape from UDRP administrative proceedings by changing the domain name registration details or the registrar after getting aware of the initiated complaint. Consequently, any transfer of a disputed domain name to another domain name holder and/or registrar during pending proceedings is considered as cyberflight and directly violates the Policy, paragraph 8.

It is evident to the Panel that the disputed domain name <sodexhocatering.com> was transferred to a new domain name holder and a new registrar during pending proceedings, and, hence, needs to be assessed as an act of cyberflight. As it will be further discussed below, such conduct regularly indicates bad faith.

C. Legal Assessment

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

(1). Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the SODEXO and SODEXHO trademarks of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in SODEXHO and SODEXO. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks comprising the mark SODEXO and SODEXHO, both registered in many jurisdictions worldwide.

Although not identical, the disputed domain names fully incorporate the Complainant’s SODEXHO trademark.

The disputed domain names differ from the SODEXHO trademark only by the addition of the generic terms “catering” and “group”. In the Panel’s view, the addition of these generic terms does not negate the confusing similarity between the Complainant’s trademark SODEXHO and the disputed domain names. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s SODEXHO trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the generic terms “catering” and “group”, which directly describes the Complainant’s activity, even enhances the false impression that the disputed domain names are somehow officially related to the Complainant and its offered products and services

The Panel concludes that the disputed domain names are likely to confuse Internet users into believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names is at least authorized by the Complainant.

The Panel is of the opinion that this assessment of confusing similarity also applies to the Complainant’s SODEXO trademark. The Complainant’s trademarks SODEXHO and SODEXO are very similar in their spelling and nearly identical in their pronunciation. Consequently, the Panel believes that the disputed domain names are confusingly similar to the Complainant’s SODEXO trademark as well.

Finally, the Panel notes that the mere addition of the generic Top-Level Domain (“gTLD”) “.com” has no distinguishing effect and may as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within disputed domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

(2). Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s SODEXHO and/or SODEXO trademark in the disputed domain names.

In the absence of a Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain names. Especially, the Respondent has failed to show that the disputed domain names have been or are intended to be used in connection with a bona fide offering of goods or services.

In fact, bearing in mind that both trademarks SODEXHO and SODEXO are fanciful terms and due to their notoriety the Panel cannot conceive of any use of the these trademarks by the Respondent, which would qualify as a legitimate use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

(3). Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.

The Panel shares the view of the Complainant that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to tarnish the Complainant’s SODEXHO and SODEXO trademarks, apparently for commercial gain or any other illegitimate benefit.

First, the Panel believes that the Respondent must have been well aware of the Complainant’s trademarks when it registered the disputed domain names in December 2010 and January 2013. At the date of registration of the disputed domain names, the Complainant’s SODEXHO and SODEXO trademarks were already globally well known for many years.

Second, the Respondent preferred not to respond to the Complainant’s contentions, although being informed of the pending administrative proceedings by email and courier in Turkish and English.

Third, the Respondent tried to conceal its true identity by providing fake company names on the websites linked to the disputed domain names and inaccurate contact details in the WhoIs records for the disputed domain names.

Fourth, as already indicated above, the transfer of the disputed domain name <sodexhocatering.com> to a new domain name holder and a new registrar after obtaining knowledge of the Complaint is apparently an act of cyberflight. In line with prior UDRP panels, the Panel is of the opinion that such cyberflight indicates bad faith registration and use under paragraph 4(b) of the Policy. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

Finally, in light of the above, the Panel cannot conceive of any good faith use of the disputed domain names by the Respondent.

The Panel therefore concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 names <sodexhocatering.com> and <sodexhogroup.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: February 3, 2014