WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Wis INC
Case No. D2019-2185
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Wis INC, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <sodexoconsultasaldo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 12, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on October 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 is a french corporation operating worldwide, specialized in foodservices and facility management with 460,000 employees.
The Complainant is the owner of a number of trademark registrations for the mark SODEXO, including the International trademark registration No. 964615 SODEXO (figurative) registered on January 8, 2008.
The SODEXO trademark is used in 80 countries and is considered to be wellknown.
The disputed domain name was registered on May 13, 2019 and resolves to a parking website featuring links relating to the Complainant’s official websites and others connecting to third competitors party websites.
5. Parties’ Contentions
The Complainant alleges that the <sodexoconsultasaldo.com> reproduces the trademark SODEXO with the mere addition of descriptive words. Such as, “consulta” and “saldo”. Such addition is not sufficient to distinguish it from the Complainant’s marks. Therefore, confusion may arise. Likewise, the Complainant contends that the Spanish expression “consulta saldo” can be perceived, mistakenly, by consumers in direct connection with vouchers issued by the Complainant, so that it just underlines the predominant character of the sign SODEXO.
The Complainant asserts that the Respondent has no rights, nor legitimate interests in the domain name <sodexoconsultasaldo.com>. Accordingly, the Respondent has no rights on SODEXO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights.
The Respondent was not commonly known by the disputed domain name.
The Complainant also states that the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.
Due to the well-known character and reputation of the mark SODEXO, the Respondent most likely knew its existence when he registered the domain name <sodexoconsultasaldo.com> and knew that he had no rights or legitimate interests in the disputed domain name. The word “sodexo” is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.
The Respondent is using the disputed domain name to direct Internet users to a webpage displaying commercial links related to vouchers proposed both by the Complainant and by some direct competitors. These pay-per-click links are likely to generate revenues. Therefore, it is clear that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.
The Respondent is using the disputed domain name <sodexoconsultasaldo.com> by exploiting the confusion with the well-known trademark SODEXO to attract Internet users to its parking page and also to misleadingly divert them to websites advertising Complainant’s competitive services.
The Complainant concludes that the unauthorized use and registration of the domain name <sodexoconsultasaldo.com> by the Respondent aims to attract and redirect Internet users to Respondent’s parking site solely for the purpose of achieving commercial profit which supports bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”.
A. Identical or Confusingly Similar
The Complainant has shown accurate trademark registration for SODEXO.
The Panel finds that the full incorporation of the SODEXO trademark in the corresponding <sodexoconsultasaldo.com> is apparent. The addition of the dictionary words “consulta” and “saldo” do not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Respondent has no rights on “sodexo” as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights, the Respondent is not a licensee of the Complainant, nor has been otherwise authorized to use the disputed domain name and neither the Respondent was commonly known by “sodexo”.
According to WIPO Overview 3.0, section 2.1: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” However, the Respondent did not file a Response to the Complaint. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of the Policy, a complainant must establish that the disputed domain name was registered and used in bad faith by the Respondent.
As previous UDRP decisions have agreed, the trademark SODEXO is to be considered well-known. See Sodexo v. Larry Johnson, Arvato Global Group, WIPO Case No. D2019-1773. The Panel also notes that the term “Sodexo” is a coined and invented term and the use of the trademark in eighty different jurisdictions. Accordingly, it seems more likely than not that the Respondent knew of the Complainant and its trademark when it registered the disputed domain name.
It is apparent from the file that the Respondent created PPC parking website featuring links to the Complainant’s competitors. In the Panel’s view the goal of the PPC parking website was to attract Internet users to the site based on the reproduction of the Complainant´s trademark in the disputed domain name. Seemingly, the use of the PPC aimed to collect click-through fees. Therefore, the use was in bad faith.
Upon the above mentioned, the Complainant has established the third element 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 <sodexoconsultasaldo.com> be transferred to the Complainant.
Date: October 28, 2019