WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman
Case No. D2020-1281
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Contact Privacy Inc. Customer 1247228940, Canada / James Lehman, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ṣodexo.com> [<xn--odexo-vq1b.com>] (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 22, 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 25, 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 26, 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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on June 30, 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
4.1. The Complainant, the French company Sodexo, was founded in 1966, and is one of the largest companies in the world specialized in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. The Complainant is one of the largest employers worldwide.
4.2. The Complainant’s trade mark SODEXO is continuously and extensively used and protected in 67 countries (e.g. International trade mark number 964615 for SODEXO, registered on January 8, 2008), since its founding in 1966.
4.3. The Disputed Domain Name <ṣodexo.com> was registered on May 15, 2020 and does not resolve to an active website.
5. Parties’ Contentions
5.1. The Complainant states that the Respondent registered without authorization the Disputed Domain Name <ṣodexo.com> on May 15, 2020.
5.2. Furthermore the Complainant contends that the Disputed Domain Name incorporates the Complainant’s trade mark SODEXO in its entirety. In the Disputed Domain Name <ṣodexo.com> the mark SODEXO is almost identical to the mark and company name SODEXO as it reproduces it with the only difference that there is a point under the first letter “s”. Thus, this addition does not prevent the Disputed Domain Name from being confusingly similar to the trade mark SODEXO.
5.3. The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this scenario, the Complainant noticed that the Disputed Domain Name was registered by the Respondent and it is currently inactive. However, the Complainant, which has recently faced several attacks, fears a possible fraudulent use of the Disputed Domain Name, notably to perpetrate an email scam sent to its clients requesting payment of false invoices on fake bank accounts.
5.4. The Complainant states that the unauthorized registration of the Disputed Domain Name by the Respondent and its passive holding, likely in the aim of a fraudulent use, are for the purpose of commercial gain and constitute bad faith registration and use.
5.5. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specific remedies to trade mark owners against registrants of domain names where the owner of the mark (i.e., the complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
6.4. The Disputed Domain Name is confusingly similar to the Complainant’s trade mark SODEXO as it contains it entirely, with the only difference that there is a point under the first letter “s”. Thus, this addition does not prevent the Disputed Domain Name from being confusingly similar to the Complainant’s trade mark SODEXO, which is clearly recognizable in the Disputed Domain Name.
6.5. Accordingly, the Disputed Domain Name is confusingly similar to the SODEXO trade mark.
6.6. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.7. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
- The Complainant has not authorized the Respondent to use its SODEXO trade mark.
- The Disputed Domain Name was initially anonymously registered in the name of Contact Privacy Inc. which is a privacy service for protecting personal data.
- According to the Complainant’s knowledge, the Respondent, whatever his identity, has no rights nor legitimate interests in the Disputed Domain Name as it has no rights in “Sodexo” as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights in the SODEXO mark.
- The Respondent was not commonly known by the Disputed Domain Name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO.
- Moreover, the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the Disputed Domain Name and to use it.
6.8. Under these circumstances, including the Respondent’s default, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the Disputed Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Accordingly, the second element of the Policy has been established.
C. Registered and Used in Bad Faith
6.9. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
6.10. The sign SODEXO is a fanciful word and it is unlikely that somebody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and mark SODEXO.
6.11. Due to the well-known character and reputation of the mark SODEXO, the Respondent most likely knew of its existence when he registered the almost identical Disputed Domain Name, so that he perfectly knew that he had no rights or legitimate interests in the Disputed Domain Name and that he cannot lawfully use it.
6.12. The Complainant has a significant body of successful UDRP decisions, including but not limited to: SODEXO v. Contact Privacy Inc., WIPO Case No. D2020-0673; SODEXO v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-3102; SODEXO v. Perfect Privacy, LLC, Network Solutions, LLC (USA) / Milen Radumilo (Romania), WIPO Case No. D2019-2100; SODEXO v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132; SODEXO v. Wis INC, Wis INC, WIPO Case No. D2020-0887; SODEXO v. WhoisGuard Protected, WhoisGuard, Inc. / Austin Miller, Llyods Limited, WIPO Case No. D2020-0957; SODEXO v. PrivacyProtect.org/ Private Registrations Aktien Gesellschaft, Domain Admin, WIPO Case No. D2012-1533; SODEXO v. Wis INC, WIPO Case No. D2019-2185; SODEXO v. 张存硕 (Cun Shuo Zhang), WIPO Case No. D2020-0312; SODEXO v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310; SODEXO v. “On behalf of sodexorewrdwrdhub.com OWNER c/o whoisproxy.com” / Tulip Trading Company, WIPO Case No. D2019-1166; SODEXO v. Larry Johnson, Arvato Global Group, WIPO Case No. D2019-1773; SODEXO v. Nihat Bahçe, FN Market / Nihat BAHCE, fnmarket, WIPO Case No. DCC2015-0002; SODEXO v. Jack Brabham, WIPO Case No. D2014-1781.
6.13. The Respondent not only knew or should have known the SODEXO mark but also very probably wanted to benefit of its reputation. It is probably that the Respondent registered the Disputed Domain Name with actual knowledge of the Complainant's rights in the SODEXO mark very likely for the purpose of creating confusion with the Complainant’s mark to divert or mislead third parties for the Respondent's illegitimate profit.
6.14. Even if the Disputed Domain Name, which has been recently created, does not presently have any active content, the passive holding of a domain name does not prevent a finding of bad faith. As we can see in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676, in which the panels found that passive holding, under the totality of circumstances of the case, can indeed constitute a bad faith use under the Policy. Here, the Panel similarly finds that, taking into account all the circumstances of the case, the non-use of the Disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding.
6.15. As shown, the unauthorized registration of the Disputed Domain Name by the Respondent and its passive holding, likely in the aim of a fraudulent use, constitute bad faith registration and use.
6.16. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <ṣodexo.com> [<xn--odexo-vq1b.com>] be transferred to the Complainant.
José Pio Tamassia Santos
Date: July 14, 2020