WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com, Deo Moleka
Case No. D2019-0861
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondents are Domains By Proxy, LLC, DomainsByProxy.com, United States of America (“United States”) and Deo Moleka, United States.
2. The Domain Names and Registrar
The disputed domain names, <sodexcointernational.com>, <sodexcointernational.info>, <sodexcointernational.net>, and <sodexcointernational.org> (the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2019. On April 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details and contact information for the Domain Names.
For the reasons set out in section 6A below, the Panel has found that it is appropriate to treat “Deo Moleko”, the second of the above-named Respondents, as the sole respondent being in all probability the registrant of all the Domain Names. All references hereinafter to the “Respondent” are references to Deo Moleko.
On April 22, 2019, the Respondent sent an email communication to the Center, stating, “If it was available when I bought it, how can we have a dispute? Have a blessed day”.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on May 15, 2019. On May 15, 2019, the Respondent sent an email communication to the Center, stating “I do not have the time to pursue this and I have not used it yet, so whoever can have it. Thanks”. The Center sent a possible settlement email on May 16, 2019. Following a request for suspension of the proceeding received from the Complainant, the Center sent the Notification of Suspension on May 21, 2019. The proceeding was reinstituted on August 6, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 2019. 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, a French company founded under the name Sodexho Alliance in 1966, is an international supplier of food services and facilities management claiming to have 460,000 employees serving 100 million consumers in 72 countries. In 2008, it changed its name to Sodexo.
The Complainant is the registered proprietor of numerous trade mark registrations covering both its previous name and its existing name. One such registration is European Union registration no. 008346462 SODEXO (word) filed on June 8, 2009 and registered on February 1, 2010, for a wide variety of goods and services in classes, 9, 16, and 35-45.
The Domain Names were all registered with the Registrar on November 9, 2018, and are connected to substantially identical parking pages hosted by the Registrar. The parking pages feature advertising links, most of which feature descriptions identifying the Complainant, correctly spelt.
5. Parties’ Contentions
The Complainant contends that although registered in the names of differently named entities, the Domain Names are identical save for the generic Top Level Domain (“gTLD”) identifiers, they were all registered on the same day with the same registrar and are connected to substantially identical webpages. The Complainant contends that it is more than likely that they were all registered by the same underlying registrant, namely the Respondent. The Complainant requests that they all be dealt with in the same proceeding.
The Complainant contends that the Domain Names, which feature what the Complainant asserts is a typosquatting misspelling of its name, are all confusingly similar to its SODEXO registered trade mark, that the Respondent can have no rights or legitimate interests in respect of the Domain Names and that the Domain Names have all been registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions. The only communications that the Center has received from the Respondent are the emails mentioned in section 3.
6. Discussion and Findings
A. Preliminary Issue
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
As is apparent in section 1, the Complaint has been filed against two differently named registrants. The first of the Domain Names identified in section 2 is registered in the name of the Respondent. The other three are registered in the name of Domains By Proxy, LLC, DomainsByProxy.com. However, the Complainant contends that all the Domain Names were registered by the Respondent. It contends that the Respondent is the underlying registrant of the three Domain Names held in the name of Domains By Proxy, LLC, DomainsByProxy.com. The Complainant bases its contention on the fact that (i) the Domain Names, despite the misspelling of the Complainant’s name, clearly identify the Complainant and are identical save for the gTLD identifiers; (ii) they were all registered on the same day; and (iii) the Registrar is the registrar for all four of them.
The Panel is satisfied on the evidence provided by the Complainant, which has not been challenged by the Respondent, that the Respondent is the holder of all the Domain Names. Specifically, the Panel finds it inconceivable that four substantially identical domain names of the character of the Domain Names could have been registered independently on the same day by different people.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names: and
(iii) the Domain Names have been registered and are being used in bad faith.
C. Identical or Confusingly Similar
Apart from the gTLD identifiers, the Domain Names are identical. At the second level, they comprise the name, “sodexcointernational”. The Complainant’s trade mark is SODEXO.
The test for confusing similarity under this, the first element, is set out in Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which explains: “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
In the view of the Panel, the Complainant’s trade mark is plainly recognizable in the Domain Names. Accordingly, the Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Domain Names are not currently being used for any purpose save to connect to parking pages hosted by the Registrar. The Respondent’s name has no obvious connection with the Domain Names. The Domain Names are not being used for any noncommercial purpose. The Respondent has no connection with the Complainant.
The Complainant asserts (and the evidence supports the contention) that the Respondent registered the Domain Names knowing and intending that they replicate a misspelling of the Complainant’s name and trade mark. In the absence of any explanation, it is difficult to conceive of any use to which the Domain Names could be put, which would not lead to confusion of Internet users. Despite the misspelling, the Domain Names on their face indicate the Complainant.
The Panel is satisfied that the Complainant has established a prima facie case calling for an answer from the Respondent. The Respondent has had ample opportunity to provide an explanation, but has elected not to do so.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel has accepted the Complainant’s contention to the effect that the Respondent registered the Domain Names, knowing and intending that they feature a deceptively similar variant of the Complainant’s name and trade mark. Whether or not the Respondent planned to leave them connected to pay-per-click parking pages hosted by the Registrar is not known, but as already stated the Panel regards it as inconceivable that Domain Names of this character can be used in any way, which does not result in confusion of Internet users and consequential damage to the Complainant’s rights. The Panel finds that the Domain Names have been registered in bad faith.
As to use, even if the current use is use by the Registrar rather than use by the Respondent, respondents nonetheless are responsible for the use made of their domain names. The current use of the Domain Names is deceptive and for commercial gain. It is designed to generate revenue from visitors to the Respondent’s site(s) and those visitors are likely to be Internet users making those visits in the mistaken belief that they are visiting a website of the Complainant. However, it is unlikely that the Respondent registered the Domain Names for the commercial benefit of the Registrar. If he is not deriving any commercial benefit from their current use, he is likely to have other plans for them, which in the view of the Panel can only represent a very real commercial threat hanging over the head of the Complainant. As such, that threat itself represents a continuing bad faith use.
The Panel finds that the Domain Names have been registered and are being used in bad faith within the meaning 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 Domain Names, <sodexcointernational.com>, <sodexcointernational.info>, <sodexcointernational.net>, and <sodexcointernational.org> be transferred to the Complainant.
Date: August 18, 2019