WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC / Name Redacted
Case No. D2020-1223
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domains By Proxy, LLC, United States of America / Name Redacted,1 United States of America, represented by Fisk Attorneys, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sodexọ.com> [xn-sodex-681b.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 May 14, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 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 May 21, 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 May 22, 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 May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. On June 1 and 3, 2020, the Center received two email communications from a third party. No substantive Response was filed with the Center. On June 19, 2020, the Center informed the Parties that it would proceed to appoint the Panel. Third party replied to the Center’s communication above on June 19, 2020, requesting the disputed domain name be transferred to the Complainant.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 29, 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 was founded in 1966 in France and originally operated under the name Sodexho Alliance. In 2008 it became known as Sodexo and since that time it has provided restaurant and catering services and facility management, such as reception, housekeeping, security, laundry, waste management, space management, benefit and reward programs, childcare, tutoring and adult education around the world, all under the SODEXO trademark. The Complainant has 470,000 employees serving 100 million consumers in 67 countries. Its revenues in 2019 reached EUR 22 billion.
The Complainant owns many trademark registrations for the trademark SODEXO, including:
International Trademark Registration No. 964615 for SODEXO Design registered on January 8, 2008;
French Trademark Registration No. 07 3 513 766 for SODEXO Design registered on July 16, 2007;
International Trademark Registration No. 1240316 for SODEXO registered on October 23, 2014;
European Union Trade mark Registration No. 008346462 for SODEXO filed on June 8, 2009;
European Union Trade mark Registration No. 006104657 for SODEXO Design filed on July 16, 2007.
The Complainant also owns several domain names, including:
The disputed domain name was registered on May 12, 2020. At the time the Complaint was filed, the disputed domain name was inactive, and now reverts to a website which featured links to third party websites. The Complainant provided evidence that the Respondent used an email address associated with the disputed domain name for fraudulent purposes, namely, to obtain undue payments.
On June 19, 2020, counsel for a third party emailed the Center to confirm that the Respondent had engaged in identity theft to register the disputed domain name using the contact details and name of the third party.
5. Parties’ Contentions
The Complainant submits that the disputed domain <sodexọ.com> is confusingly similar to the Complainant’s well-known registered trademark. The disputed domain is almost identical to the registered trademark SODEXO except for the addition of the point beneath the letter “o”. This does not serve to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent is not commonly known by the SODEXO name, and is not affiliated or associated with the Complainant. The Complainant has not authorized or licensed the Respondent to use the Complainant’s registered trademark. Accordingly, the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered a confusingly similar domain name in association with a website that has sent scam emails to unsuspecting third parties to fraudulently obtain money.
The Respondent did not file a response in this proceeding.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(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 interest 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 Panel finds that the Complainant does have registered trademark rights in the trademark SODEXO by virtue of the registrations listed in paragraph 4 of this Decision.
The Panel finds that the disputed domain name <sodexọ.com> is confusingly similar to the Complainant’s trademark as the disputed domain name incorporates the entire SODEXO trademark. The use of the dot under the letter “o”, does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the SODEXO trademarks as noted in section 4 of this Decision. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark. The Respondent’s use of the disputed domain name is not considered a bona fide offering of goods and services under the Policy.
Furthermore, in the circumstances of this case, the composition of the disputed domain name, incorporating the Complainant’s trademark and the use of a dot under the letter “o” is intended to capture typographical errors made by unsuspecting internet users thereby intending to trade on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.
In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name to divert internet users seeking the Complainant’s website and services for purposes of monetary gain. The registration of the disputed domain name was clearly abusive, targeting the Complainant’s SODEXO trademarks which were well known long before the registration of the disputed domain name. The Respondent has engaged in identity theft in misappropriating a third party name and contact details to obtain the registration of the disputed domain name. This is a compelling reason to find that this is an abusive registration.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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 <sodexọ.com> [xn-sodex-681b.com] be transferred to the Complainant.
Christopher J. Pibus
Date: July 8, 2020
1 The Respondent appears to have used the name and contact details of a third party when registering the Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to the Decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc v. Name Redacted, WIPO Case No. D2017-1520.