WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Elena Shaffer
Case No. D2015-0810
1. The Parties
The Complainant is SODEXO of Issy-Les-Moulineaux, France, represented by Areopage, France.
The Respondent is Elena Shaffer of Carrollton, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mindfulbysodexo.com> (“the Domain Name”) is registered with ZigZagnames.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2015. On May 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 12, 2015, 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 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 May 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 16, 2015. 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 owns registered trade marks for SODEXO in word mark and logo form across the world, inter alia, in the USA where the Respondent is based, for a wide variety of services including, inter alia, real estate services.
The Respondent registered the Domain Name in 2014 and is using it to point Internet users to a web site proposing apartments for rent in Toledo, Ohio which is not connected to the Complainant.
5. Parties’ Contentions
The Complainant submissions can be summarized as follows:
Founded in 1966, the Complainant is one of the largest food services and facilities management companies in the world, with over 400,000 employees in 80 countries. For 2014 revenues reached EUR 18 billion. It has been listed as one of “The world's most admired companies” by Fortune magazine. It was ranked number 1 in its industry in “Diversified Outsourcing Services” of the 2014 edition.
From 1966 to 2008 the Complainant promoted its business under the SODEXHO mark. In 2008 it simplified the spelling to SODEXO. It provides a wide variety of services including restaurant and catering services, construction management, reception services, maintenance services, leisure cruises, housekeeping, rehabilitation services, employee benefit vouchers services, distribution of aid and subsidy services, childcare, education, concierge services and home care.
It is the registrant of numerous domain names corresponding to or containing SODEXO.
It owns registered trade marks for SODEXO in word mark and logo form across the world, inter alia, in the USA where the Respondent is based for a wide variety of services including, inter alia, real estate services.
The Respondent has registered and is using the Domain Name to point Internet users to a web site proposing apartments for rent in Toledo, Ohio.
The Domain Name identically reproduces the mark SODEXO in which the Complainant has rights with the addition of the descriptive expression “mindful by”. This expression is inoperative to distinguish it from the Complainant’s marks. On the contrary it is intended to underline the name SODEXO and thus to reinforce the likelihood of confusion in the public mind. The public will undoubtedly believe that the associated web site comes from the Complainant’s group of companies.
The risk of confusion is likely as the Domain Name is linked to a site used to offer real estate services when the Complainant is specialized in facility management services which are similar or closely linked to real estate business.
The Respondent is unknown to the Complaint.
The Respondent has no rights or legitimate interests in the Domain Name as it has no rights in SODEXO as a corporate name prior to the Complainant’s rights.
The Respondent is not commonly known by the Domain Name prior to use by the Complainant. The Respondent is not connected in any way to the Respondent and has no consent from the Complainant to use the Domain Name.
It is unlikely that her adoption of the Domain Name is by coincidence considering the very distinctive and arbitrary nature of the coined name SODEXO.
The Respondent is using the Domain Name by exploiting confusion with the well-known mark SODEXO to divert Internet traffic to her web site offering not directly competitive, but similar or closely linked services to that of the Complainant. This is an attempt to attract for commercial gain Internet users to the Complaint’s web site. The registration and use of the Domain Name harms the goodwill in the Complainant’s mark by confusing customers and interfering with Sodexo's business by frustrating attempts by Internet users to reach the Complainant’s official web sites. This is bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant owns registered trade marks for SODEXO in word mark and logo form across the world, inter alia, in the USA where the Respondent is based for a wide variety of services including, inter alia, real estate services.
The Domain Name consists of the Complainants' SODEXO registered trademark and the generic text “mindful by”. The distinctive part of the Domain Name is the SODEXO trade mark which is an invented name referring to the Complainant and has no other general meaning in the English language. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. She has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given its confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is she making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Use in Bad Faith
Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why she would be entitled to register the Domain Name which consists of the Complainant’s distinctive and invented trade mark and generic text. The site has been used to promote real estate services, not connected to the Complainant. In the absence of a Response from the Respondent, considering the fame of the Complainant’s mark and the material attached to the Domain Name the Panelist is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to her website for commercial gain by creating a likelihood of confusion that it is connected to the Complainant and its SODEXO mark. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of the Policy.
For the foregoing reasons, the Panel orders that the Domain Name <mindfulbysodexo.com> be transferred to the Complainant.
Date: June 24, 2015