WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Contact Privacy Inc. Customer 1246053778 / Edwin Smith
Case No. D2020-0566
1. The Parties
The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Contact Privacy Inc. Customer 1246053778, Canada / Edwin Smith, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sodoxe.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2020, 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 March 13, 2020 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 March 17, 2020.
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 March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2020.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 1, 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 the French company SODEXO (previously called SODEXHO ALLIANCE), one of the largest companies in the world specialized in foodservices and facilities management. The Complainant operates in 67 countries worldwide, with 470,000 employees.
The Complainant owns registrations for its marks SODEXO and SODEXHO in over 80 countries worldwide. A proof of these registrations was attached to the Complaint as Annexes 5 to 14. The Complainant also owns several domain names formed by the marks SODEXO or SODEXHO.
The Complainant has established rights over the marks SODEXO and SODEXHO internationally, and its fame and renown is linked to the Complainant. The Complainant’s numerous trademark registrations include, among others, SODEXO, International registration number 964615, registered on January 8, 2008.
The disputed domain name was registered on December 11, 2019. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant is the owner of registrations worldwide for the marks SODEXO and SODEXHO, which have been in use worldwide for over 50 years.
The Respondent registered the disputed domain name, which incorporates the trademark SODEXO, registered by the Complainant, with the inversion of the two last vowels, namely “sodoxe”, as if it was a typo.
As stated by the documents presented, the registration and use of the trademarks SODEXO and SODEXHO predate the registration of the disputed domain name.
The disputed domain name does not direct to an active website. Nevertheless, the Complainant considers that the disputed domain name may be used to perpetrate fraudulent schemes, such as the ones the Complainant has recently suffered.
In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users by leading them to phishing scams, that it is clear that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is, indeed, confusingly similar to the SODEXO trademark, as the latter is virtually incorporated in the disputed domain name, with the mere inversion of the last two vowels.
The Complainant has presented consistent evidence of ownership of the trademark SODEXO in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.
The use of the Complainant’s trademark with the substitution/inversion of letters in the disputed domain name does not prevent a finding of confusing similarity with the trademark.
Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant
B. Rights or Legitimate Interests
Given the clear evidence that the trademark SODEXO is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent. Furthermore, the Respondent does not appear to be commonly known by the disputed domain name.
It has also been shown that the Respondent is not making any direct use of the disputed domain name, noting the disputed domain name does not resolve to an active website. The Respondent is not making a noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods or services.
The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts outlined in sections A and B above can evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The Complainant’s trademark is recognized as being well known in the respective market. In this Panel’s view, the Respondent was aware of the Complainant’s rights in the SODEXO mark at the time the disputed domain name was registered. These facts indicate that such registration was made in bad faith.
The disputed domain name was registered to clearly mislead Internet consumers – hence the intentional typo altering the order of the letters of the Complainant’s trademark. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant. Further, the inverted letters can be also considered a common mistyping, a fact which typo squatters normally take profit from by giving Internet users the impression that the disputed domain names belong to the Complainant. It may lead the public to consider the disputed domain name to lead to a site related to the Complainant. The Complainant presented evidence that a Google search with the disputed domain name led to results linked to the trademark SODEXO, confirming the possibility of Internet consumer confusion.
The current passive holding of the disputed domain name is also evidence of bad faith from the Respondent. Previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the Panel notes the distinctive and well-known nature of the Complaint’s trademark SODEXO, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put support a finding of bad faith.
The Panel finds that the Respondent registered and is using the disputed domain name with the intention of improperly obtaining benefits and harming the Complainant’s reputation in the market.
In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name in bad faith.
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 <sodoxe.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: May 15, 2020