WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Jau Khan
Case No. D2019-2814
1. The Parties
The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Jau Khan, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <paysodexo.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2019.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on January 17, 2020. 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 company founded in 1966 and is one of the largest companies in the world specialized in foodservices and facilities management. The Complainant serves 100 million consumers in 72 countries.
The Complainant holds trademark registrations for SODEXO in various jurisdictions, including Malaysia (e.g., Malaysian trademark registration No. 07023833, registered on December 4, 2007), country of the Respondent.
The Complainant also owns numerous domain names containing their trademark SODEXO.
The disputed domain name was registered on November 12, 2019. According to the evidence provided by the Complainant, the disputed domain name is inactive.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to their trademark, adding only the word “pay”, which would not be sufficient to distinguish it from the Complainant’s marks.
The Complainant also argues that the risk of confusion or association with their mark is stronger because the expression “Sodexo Pay” and “Pay Sodexo” are precisely used by the Complainant.
Further on, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
In addition to that, the Complainant notes that SODEXO is a fanciful trademark and nobody could legitimately choose this word or any variation thereof, also in association to the element “pay”, unless the Respondent was seeking to create an association with the Complainant’s activities.
Finally, the Complainant seeks to have the disputed domain name transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the 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;
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the SODEXO trademark, in different jurisdictions, therefore holding rights in the SODEXO mark.
The disputed domain name is confusingly similar to the Complainant’s trademark registration, with the mere addition of the term “pay”.
Also, the mere addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity with the Complainant’s trademark for purposes of the Policy. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel concludes that the disputed domain name is indeed confusingly similar to the Complainant’s registered trademark SODEXO.
Therefore, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark SODEXO and there is no evidence that the Respondent has been or is commonly known by the disputed domain name or is using it in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use.
The Panel finds that the Complainant has established a prima facie case that none of the three circumstances establishing rights or legitimate interests mentioned above applies. As stressed by many UDRP panels, in such a case, the burden of production then shifts to the respondent to rebut the complainant’s prima facie case.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must also be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Considering the wide recognition of the Complainant’s trademark, it is clear that the Respondent was aware of the Complainant’s trademark when it chose the disputed domain name.
As a matter of fact, when the disputed domain name was registered by the Respondent, the trademark SODEXO was already registered and widely used in connection to the Complainant’s activities.
Thus, the Panel finds that the Respondent has intentionally registered the disputed domain name with the sole objective of making a connection with the Complainant’s trademark and its services.
In this sense, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that bad faith use could be established where a respondent had been entirely inactive. Not all the grounds which supported a bad faith finding in that case are present in the facts as set out in the Complaint. However, the notoriety of the Complainant’s mark, the failure by the Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain name, and the fact that it is not possible to conceive of any active use of the disputed domain name which would amount to good faith use and/or would not infringe the Complainant’s mark rights cumulatively support a finding by the Panel that the Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 4(a) 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 <paysodexo.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: January 30, 2020