WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Jack Brabham
Case No. D2014-1781
1. The Parties
The Complainant is SODEXO of Issy-Lesmoulineaux, France, represented by Areopage, France.
The Respondent is Jack Brabham of London, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <sodexo-facilities.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, 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. On October 14, 2014, the Complainant filed an addendum to the Complaint.
The Center verified that the Complaint together with the addendum to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2014.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 21, 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 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. The Complainant is the 18th largest employer worldwide and has reached revenues of billions of EUROs.
The 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, the Complainant ranked number one overall, and was also classed first for innovation, social responsibility, financial soundness, long-term investment and global competitiveness.
The Complainant 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, “www.sodexo.com/en/services/quality-life-services.aspx”. The services provided include:
- On-site Service Solutions: these services relate to restaurant and catering services as well as facilities management services including a wide-range of on-site services such as construction management, reception services, technical maintenance, leisure cruises, housekeeping, rehabilitation services.
- Motivation Solutions: Sodexo issues 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…), Incentives and Recognition to help organizations reach their qualitative and quantitative objectives (gift vouchers, gift boxes…), Public Benefits to manage and control the distribution of aid and public subsidies.
- Personal & Home Services including childcare, tutoring and adult education, concierge services and home care for dependent persons.
The Complainant is also the registrant of numerous domain names corresponding to and/or containing its trademarks SODEXHO / SODEXO. The Sodexo group promotes its activities among others under the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexo.fr>, <sodexoca.com> and <sodexousa.com>.
The trademarks SODEXHO / SODEXO are continuously and extensively protected and used in 80 countries.
The trademark SODEXO/ SODEXHO has a strong reputation and is widely known all over the world and the Complainant gave evidence of registrations of the trademarks 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).
The Complainant’s SODEXHO and Sodexo trademarks have been recognized as well known. (See Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287, Sodexo v. Shahzan, WIPO Case No. D2013-1308, Sodexo v. Sodexho Catering WIPO Case No. D2013-1950.
The Respondent, an individual named Jack Brabham has registered the disputed domain name on September 26, 2014.
5. Parties’ Contentions
The Complainant contends that:
- The disputed domain name <sodexo-facilities.com> is identical or confusingly similar to the trademarks SODEXHO and SODEXO.
The Complainant has among others subsidiaries in the United Kingdom and in Ireland respectively called SODEXO UK and SODEXO Ireland.
- The marks SODEXHO / SODEXO have a strong reputation and are widely known all over the world, in particular in the United Kingdom where is located the Registrant of the disputed domain name <sodexo-facilities.com>.
- The UK subsidiary of the Complainant has become aware of emails sent to its suppliers by a person claiming to be Jack Brabham from an email address [firstname.lastname@example.org] in an attempt to obtain goods under false pretenses. It clearly appears from this exchange of correspondence that the Respondent fraudulently misrepresents himself as belonging to SODEXO UK & Ireland as it signs his emails with reference : “IT Procurements team lead, Sodexo facilities UK & Ireland”.
- Due to the well-known character and reputation of the SODEXHO / SODEXO marks, it is hardly likely that the Respondent registered the disputed domain name <sodexo-facilities.com> without knowing the existence of the Complainant and of the SODEXHO / SODEXO marks and, that he may have legitimately thought to be able to lawfully use the disputed domain name when registering it and that the choice of the disputed domain name results from a mere coincidence.
- The Complainant is convinced that the Respondent perfectly knew the rights the Complainant owns worldwide on the SODEXHO / SODEXO marks, and among others in the United Kingdom and Ireland, and was in bad faith when registering the disputed domain name.
- By using an email address [email@example.com] and by signing his emails sent from this address with the trade names and addresses of the companies SODEXO UK and SODEXO Ireland, the Respondent is in bad faith and obviously wants to take advantage of Sodexo reputation for misleading suppliers.
- Bad faith clearly results from the false presentation made by the Respondent in his emails and in his signature.
- Moreover, the location of the Respondent’s WhoIs address which is very close to the head office of SODEXO UK also tends to show the Respondent’s willingness to create confusion with the trademark SODEXO.
- The lack of response from the Respondent to the cease and desist demand also constitutes an additional element demonstrating his bad faith.
- By using the domain name <sodexo-facilities.com> as email address [Name@sodexofacilities. com], the Respondent has intentionally attempted to attract, for commercial gain, some third parties by creating a likelihood of confusion with the Complainant's mark and by misleading them into believing that the email address connected to the domain name is somehow authorized or endorsed by the Complainant.
- The unauthorized registration of the disputed domain name <sodexo-facilities.com> by the Respondent and its use as email address for deceiving third parties are solely for the purpose of commercial gain and then constitute bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has registered and common law rights in the trade marks SODEXHO and SODEXO.
Further the Panel finds that the disputed domain name is confusingly similar to Complainant’s 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. The domain name <sodexo-facilities.com> identically reproduces the mark SODEXO and quite identically reproduces the other mark SODEXHO in which the Complainant has rights with the addition of the descriptive English word “facilities”. The presence of the common term “facilities” in the disputed domain name is not sufficient to distinguish it from the Complainant’s marks. It is widely admitted that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question: 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). On the contrary, the Complainant being notably specialized in facilities management services, the association of the name SODEXO with the word “facilities” in the domain name at issue is even more confusing for the public.
As for the addition of the generic top level domain (“gTLD”) “.com”, it has been well established in numerous UDRP decisions that such addition may be disregarded when considering the issue of identity or confusing similarity.
In conclusion, the Panel finds the disputed domain name to be confusingly similar to the SODEXHO and SODEXO trademarks that the Complainant has rights in.
Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s SODEXHO and SODEXO marks have been extensively used and registered for many years and this Panel as other UDRP panels before holds that the Complainant’s trademarks are well known. See Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287, Sodexo v. Shahzan, WIPO Case No. D2013-1308, Sodexo v. Sodexho Catering, WIPO Case No. D2013-1950.
On the other hand, the disputed domain name was only recently registered and there is no evidence that the Respondent has been commonly known by the disputed domain name.
Moreover, the Respondent has not been licensed nor authorized by the Complainant to use the SODEXO mark or to register and use the disputed domain name.
The 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 such circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
From the evidence provided in the case file, the Panel infers that the Respondent knew of the existence of the Complainant and of the SODEXHO / SODEXO marks, knew about the rights the Complainant owns worldwide in the SODEXHO / SODEXO marks, and among others in the United Kingdom and Ireland, and that the Respondent acted in bad faith when registering the disputed domain name.
From the registration and use of email address [name]@sodexo-facilities.com], it is without doubt the intent of the Respondent to take advantage of the Complainant’s reputation and to misleading suppliers.
The emails sent by the Respondent such as the one sent to the company Kelway Ltd on October 1st, 2014 clearly show that the Respondent has attempted to mislead the suppliers of the Complainant about the commercial origin of the request for fraudulently obtaining some computer goods. Moreover, the location of the Respondent’s WhoIs address which is very close to the head office of SODEXO UK appears to show the Respondent’s willingness to create confusion with the Complainant.
Not last, the lack of response from the Respondent to the cease and desist demand also constitutes
an additional element of bad faith.
Therefore, this Panel concludes that the unauthorized registration of the domain name <sodexo-facilities.com> by the Respondent and its use as an email address for deceiving third parties are solely for the purpose of commercial gain which constitutes bad faith registration and use in the sense 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 <sodexo-facilities.com> be transferred to the Complainant.
Beatrice Onica Jarka
Date: December 5, 2014