WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Registration Private, Domains By Proxy, LLC / Krissa Pucket
Case No. D2020-1315
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Krissa Pucket, United States.
2. The Domain Name and Registrar
The disputed domain name <sodexos.net> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 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 28, 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 June 1, 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 8, 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 listed company that operates a food services and facilities management business with 470,000 employees serving 100 million consumers in 67 countries and consolidated revenues of EUR 22 billion in 2019. From 1966 the business was promoted as SODEXHO then in 2008 it changed its brand to SODEXO. The Complainant holds registrations for the trademark SODEXO in numerous countries, including International trademark registration No. 964615 SODEXO (figurative) registered on January 8, 2008.
The Complainant is also the owner of, inter alia, the domain name <sodexo.com> registered on October 9, 1998, which resolves to the company’s main website containing information about the company’s business.
The Disputed Domain Name <sodexos.net> was registered on May 18, 2020. The Complainant has supplied uncontested evidence that the Disputed Domain Name is connected to a fraudulent email scheme that uses a <sodexos.net> email address to impersonate an employee of the Complainant in communications with a third party company in an attempt to fraudulently obtain a payment for the Respondent’s benefit.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark SODEXO in various countries as prima facie evidence of ownership.
The Complainant submits that the mark SODEXO is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <sodexos.net>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the SODEXO trademark and that the similarity is not removed by the addition of the letter “s” and addition of the generic Top-Level Domain (“gTLD”) “.net”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to perpetrate an email scam, and because its web presence resolves to an inactive webpage. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a “phishing” scheme.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark SODEXO in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the SODEXO trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark SODEXO; (b) followed by the addition of the letter “s”; (c) followed by the gTLD “.net”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “sodexos”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the addition of one letter: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel finds that the addition of the letter “s” is confusing and does not in itself prevent a finding of confusing similarity.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark SODEXO is not a dictionary word but rather a highly distinctive and well-known name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the mark SODEXO is “purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and marks SODEXO”. The Complainant also supplied a copy of an email purporting to be from the “CDM General Manager Food and Nutrition Services” of the Complainant sent to a third party with new bank account details provided in the hope that a payment would be made to that account by the unwitting recipient.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using email communications pretending to be from a fake employee of the Complainant operating under the brand SODEXO to the purpose of misleading the recipient based on the wide recognition of the Complainant’s mark SODEXO and thereby deceive the recipient of those communications into making a payment.
The Panel notes also that the Disputed Domain Name does not resolve to an active webpage. It could therefore reasonably be inferred that the Respondent was opportunistically using the Complainant’s mark in the furtherance of the perpetration of a fraud.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy requires that the complainant must also demonstrate that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, this Panel accepts the Complainant’s evidence of the conduct of the Respondent by pretending to be an employee of the Complainant in an email communication with a third party as evidence that the Respondent was well aware of the Complainant’s trademark SODEXO when registering the Disputed Domain Name. The Panel finds that the most likely reason for the Respondent registering the Disputed Domain Name and then using it to assume the identity of a fake employee of the Complainant in an email communication asking a third party for money, is that the Respondent was attempting to perpetrate a fraud.
Further, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could flow from the Respondent’s registration by almost 12 years in the United States, where the Respondent is located.
On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive the recipient of the phishing email into believing it was a legitimate communication from a domain name associated with the Complainant’s SODEXO brand. The obvious risk of deception or confusion as to the origin of such an email, or affiliation of the email communication with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.4.
Evidence was also furnished that the Disputed Domain Name resolves to an inactive webpage unconnected with any bona fide supply of goods or services by the Respondent. Having regard to (i) the high degree of distinctiveness and well-known reputation of the SODEXO mark, (ii) the failure of the Respondent to submit a response, (iii) the evidence, accepted by this Panel, of the Respondent’s concealing her identity or use of false contact details (noted to be in breach of the registration agreement) and adverse inference this Panel draws from the Respondent’s use of a privacy shield; and (iv) the implausibility of any good faith use to which the domain name may be put, in the circumstances finds this as further evidence of the respondent’s bad faith (see WIPO Overview 3.0, section 3.1.4).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark SODEXO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating an email address comprised of the Disputed Domain Name then has used that email address to pretend to be an employee of the Complainant, for the purpose of seeking to obtain a financial payment in an attempt to defraud a third party, an activity sometimes referred to as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent “phishing” scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Linklaters LLP v. Domain Admin, Privacy Protect, LLC / Patrick Leitner, WIPO Case No. D2019-0096).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <sodexos.net> be transferred to the Complainant.
Date: July 10, 2020