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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. On behalf of sodexoenqaqe.com owner, Whois Privacy Service / Terry Danchak

Case No. D2020-1238

1. The Parties

The Complainant is Sodexo, France, represented by Areopage, France.

The Respondent is On behalf of sodexoenqaqe.com owner, Whois Privacy Service, United States of America (“United States”) / Terry Danchak, United States.

2. The Domain Name and Registrar

The disputed domain name <sodexoenqaqe.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 22, 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 25, 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 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2020.

The Center appointed George R. F. Souter as the sole panelist in this matter on June 24, 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, previously known as Sodexho Alliance, is a French company offering food services and facility management service under its trademark SODEXO (previously SODEXHO). It operates in 67 countries, and employs 470,000 people. Its turnover in 2019 was circa EUR 22 billion.

The Complainant is the proprietor of, inter alia, the International Trademark Registration No. 964615, relating to its trademark SODEXO, registered on January 8, 2008, designating among others United States.

The Complainant owns numerous domain names containing the SODEXO trademark, including <sodexo.com> and <sodexoengage.com>.

The disputed domain name was registered on April 19, 2020, and resolves to a webpage with the “Account Suspended” indication on it.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its SODEXO trademark, containing the SODEXO in its entirety, with the mere addition of the word “enqaqe”, a typographic variation of the word “engage”.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, to the best of the Complainant's knowledge, it is not generally known by the disputed domain name, and that the Complainant has never granted permission to the Respondent to use its SODEXO trademark in connection with a domain name, or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is currently being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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

It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” gTLD to be irrelevant in the circumstances of the present case, and so finds.

It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the additional element is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers that the mere addition of the word “enqaqe”, which appears to be a typographic variation of the word “engage” does not prevent a finding of confusing similarity because the Complainant’s SODEXO trademark is plainly recognizable in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s SODEXO trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel is convinced that the Complainant's distinctive and widely-known SODEXO trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.

Since the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, with which the Panel agrees, it has become well-established in prior decisions under the Policy that a passive holding of a disputed domain name is not per se sufficient to avoid a finding of use of that domain name in bad faith. In the circumstances of the present case, the Panel considers that any use of the disputed domain name would, automatically, damage the interests of the Complainant. Therefore, there is no implausibility of any good faith use to which the disputed domain name may be put. Accordingly, the Panel finds that the disputed domain name is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <sodexoenqaqe.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: July 8, 2020

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