WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. WhoisGuard Protected, WhoisGuard, Inc. / Mamta Juyal, MOM Digital Marketing
Case No. D2020-0958
1. The Parties
Complainant is SODEXO, France, represented by Areopage, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mamta Juyal, MOM Digital Marketing, India.
2. The Domain Name and Registrar
The disputed domain name <sodexocoupon.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
On March 31, 2020, Complainant filed a Complaint against three domain names, among them the disputed domain name. On April 9, 2020, the Center transmitted by email a request to Complainant inviting it to file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control. Accordingly, this Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was May 11, 2020. On April 21, 2020, the Center received an informal response from Respondent in which Respondent claimed that the disputed domain name had been available for registration and that Respondent had invested money in the disputed domain name. Also, Respondent stated that it will return the disputed domain name upon receiving full financial recovery. On May 10, 2020, the Center received another email communication from Respondent in which Respondent stated that it had halted its work because of the ongoing dispute and expressing its wish to negotiate. However, Respondent did not file a formal response. Accordingly, the Center notified the parties of the notification of Panel Appointment on May 12, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 18, 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.
On May 31, 2020 the Center received a further informal response from Respondent stating that it used a disclaimer in its footer.
4. Factual Background
Complainant is the French company SODEXO (previously known as SODEXHO ALLIANCE), an international company founded in 1966 that specializes in food services and facilities management. Complainant states that it has 470,000 employees serving 100 million consumers in 67 countries, including in India. In fiscal year 2019, Complainant states that its consolidated revenues were EUR 22 billion.
Complainant is the proprietor of trademark registrations for marks containing the SODEXO mark (the “SODEXO Mark”) in 67 countries, the evidence of which was attached to the Complaint. In particular, Complainant owns the following trademark registrations:
- Indian trademark No. 1635770 for SODEXO (device mark) registered on December 28, 2007 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, and 42;
- Indian trademark No. 2480740 for SODEXO QUALITY OF LIFE SERVICES (device mark) registered on February 19, 2013 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
Complainant owns numerous domain names containing the SODEXO Mark, including <sodexo.com> and various country code domains.
The disputed domain name was registered by Respondent on December 23, 2019. The domain name resolves to a website that cannot be accessed due to a warning alerting the user to potential malware.
5. Parties’ Contentions
Under the first element, Complainant states that the SODEXO Mark and SODEXHO has a strong reputation and is widely known all over the world. The well-known character of the SODEXO and SODEXHO marks have been recognized by previous panels. The disputed domain name is composed of the SODEXO Mark and the French word “coupon” which translates to “tickets” in English. The addition of the descriptive word “coupon” is not sufficient to distinguish it from Complainant’s marks. Moreover, the SODEXO Mark is used by Complainant for vouchers and gift cards, which will lead the public to believe that the disputed domain name is associated with Complainant. The website to which the disputed domain name resolves to a notice that the user is alerted to the connection of a malicious website.
Under the second element, Complainant states that it has no knowledge that Respondent has rights or legitimate interests in the domain name, as Respondent has no rights in the SODEXO Mark that would predate Complainant’s rights. Respondent is not commonly known by the domain name, nor does Respondent have any affiliation or connection with Complainant, which has not authorized Respondent to register or use the disputed domain name.
Under the third element, Complainant states that, due to the well-known character and reputation of the SODEXO and SODEXHO marks, particularly in India where Respondent is located, Respondent most likely registered the disputed domain name in awareness of these marks. The SODEXO Mark is purely fanciful and no one could legitimately choose this word without seeking to create an association with Complainant. The use of Complainant’s mark to direct to a malicious website constitutes evidence of bad faith and tarnishes the SODEXO Mark. Respondent’s failure to perform a trademark search prior to registering the domain name is evidence of bad faith, as was Respondent’s use of a privacy service to conceal its identity.
Complainant requests transfer of the disputed domain name.
Respondent did not provide a formal reply to Complainant’s contentions. In email communications with the Center, Respondent stated that it had purchased the domain name as it was available, which, in the view of Respondent, was evidence that the ownership of the domain name had expired. Respondent also stated that it had raised capital and invested in the domain name and could provide documents evidencing the purchase of the domain name.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a formal response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the SODEXO Mark through registrations in numerous jurisdictions including India, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s SODEXO Mark with the disputed domain name <sodexocoupon.com>, the Panel finds that the disputed domain name is confusingly similar with the Mark. The disputed domain name contains the Mark in its entirety. The addition of the dictionary term “coupon” does not preclude a finding of confusing similarity.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the SODEXO Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist and that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant.
The Panel finds that the evidence submitted by Complainant therefore establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to timely file a formal response, has not submitted evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted in substance any of Complainant’s contentions. Respondent’s email communication in which it expressed its belief that the availability of the disputed domain name provided a basis to acquire the domain name, and its assertion of having made a financial investment in the associated website, does not establish Respondent’s rights or legitimate interests therein. Respondent has not demonstrated any of the possible defenses under UDRP paragraph 4(c). The disputed domain name contains Complainant’s distinctive and well-known SODEXO Mark in its entirety, and it resolves to a website apparently containing malicious content. Such circumstances are not compatible with a finding of rights or legitimate interests.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith under Policy, paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the SODEXO Mark significantly predate the registration of the disputed domain name. The disputed domain name contains Complainant’s distinctive and well-known SODEXO Mark in its entirety, with the addition of the dictionary term “coupon.” The Panel finds that such circumstances demonstrate Respondent’s likely knowledge of Complainant’s rights. Respondent has not provided any credible evidence-backed rationale for registering the disputed domain name.
Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in using the domain name for apparent malware distribution (see WIPO Overview, section 3.4). The Panel takes note of Complainant’s submission of screen shots demonstrating that the disputed domain name resolves to a website that cannot be accessed due to potential malware. In the view of the Panel, the nature of the disputed domain name, the absence of any plausible good-faith explanation for the registration and use of the domain name, and the use of the disputed domain name for the apparent distribution of malware are circumstances that support a finding of bad faith.
The Panel therefore finds that Complainant has established the third element under 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 <sodexocoupon.com> be transferred to Complainant.
Date: June 1, 2020