WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Wis INC, Wis INC
Case No. D2020-0887
1. The Parties
The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Wis INC, Wis INC, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <mysodexosupport.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 April 9, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020.
The Center appointed Mihaela Maravela as the sole panelist in this matter on May 14, 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 French company that was founded in 1966, specializing in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. The Complainant is using the trademark SODEXO in connection with various activities such as on-site services, benefits & rewards services, personal & home services. In France, the Complainant is among others specialized in issuing vouchers called CESU meaning “Chèque Emploi Service Universal” in French and corresponding to “cheques for universal employment services” in English. CESU are vouchers or e-vouchers allowing their owners to pay a salary to people who work for them and preform household tasks, babysitting or other services for individuals.
The Complainant is the exclusive owner of registered trademarks consisting of the word SODEXO in various jurisdictions throughout the world, including the following:
- the International Trademark for the word SODEXO with registration number 964615 registered as of January 8, 2008,
- the International Trademark for the word SODEXO with registration number 689106 registered as of January 28, 1998,
- the European trademark for the word SODEXO filed on July 16, 2007 and registered under no. 006104657 as of June 27, 2008.
The Complainant also owns numerous domain names corresponding to and/or containing SODEXO. The Sodexo group promotes its activities inter alia under the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>.
The disputed domain name was registered on January 27, 2020, and at the date of the decision resolves to a website displaying a pay-per-click (“PPC”) advertising page containing third party, commercial advertising links related to the area of the Complainant’s activities.
5. Parties’ Contentions
The Complainant argues that the disputed domain name identically reproduces its trademark SODEXO with the addition of the words “my” and “support” that are inoperative to distinguish them from the Complainant’s trademarks.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name as it has no rights prior to the Complainant’s rights, the Respondent has not been commonly known by the disputed domain name and the Respondent has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name. The Respondent is using the disputed domain name as a parking page featuring links relating to vouchers and CESU, some of them connecting to the Complainant’s official websites and the others connecting to third party websites.
In addition, the Complainant argues that due to the well-known character and reputation of its trademark all over the world, the Respondent most likely knew of its existence when it registered the disputed domain name. The Respondent is using the disputed domain name to direct Internet users to a webpage displaying commercial links related to vouchers, and in particular French vouchers called CESU, proposed both by the Complainant and by some direct competitors. These PPC links are likely to generate revenues. Therefore, the Complainant concludes that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The offer to sale the disputed domain name displayed on the website corroborates that the disputed domain name is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the SODEXO trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”.
Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Here the disputed domain name wholly incorporates the Complainant’s SODEXO trademark in addition to the words “my” and “support”. This addition does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark SODEXO and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark SODEXO in the disputed domain name.
Furthermore, according to the unrebutted evidence adduced by the Complainant, the disputed domain name is used to host a parked page comprising PPC links to competing services. According to section 2.9 of the WIPO Overview 3.0 “applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” In this case, the PPC links generate search results with competing services to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests on the Respondent. For a similar finding see F5 Networks, Inc. v. Domain Administrator, c/o Whois Watchdog, WIPO Case No. D2016-0043.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its SODEXO trademark is widely used in commerce well before the registration of the disputed domain name in January 2020. The trademark of the Complainant is a distinctive and well-known trademark. See e.g. Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132.
The disputed domain name incorporates the Complainant’s trademark and the generic words “my” and “support”, in addition to the relevant gTLD. Furthermore, from the unrebutted evidence put forward by the Complainant, the website associated with the disputed domain name contains links related to the services offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark SODEXO. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.
As the website at which the disputed domain name redirects features links to the Complainant’s competitors and given the confusing similarity between the SODEXO trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably, the Respondent intends to benefit from the confusion created. It is likely that the Respondent earns income when Internet users click on the links in search of the Complainant’s services. This amounts to use in bad faith. For a similar finding see Sodexo v. Wis INC, WIPO Case No. D2019-2185; Sodexo v. WhoisGuard Protected - WhoisGuard, Inc / Da Boo, WIPO Case No. D2019-1426.
The Respondent has been the respondent in another prior UDRP case filed by the Complainant and concerning the same trademark, and the Panel found against the Respondent in similar circumstances as in the present case. See Sodexo v. Wis INC, supra. This is an additional indication of bad faith.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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, <mysodexosupport.com> be transferred to the Complainant.
Date: May 28, 2020