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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SODEXO v. Super Privacy Service LTD c/o Dynadot / Zhichao

Case No. D2020-1762

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Zhichao, China.

2. The Domain Name and Registrar

The disputed domain names <sodexhobenefitsindia.com>, <sodexobenefitscentrr.com>, <sodexoemployeebenefits.com>, <sodexohubreward.com>, <sodexorewardhu.com>, and <ssodexorewardhub.com> (each, the “Disputed Domain Name”, and together, the “Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2020. On July 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names and <experienciabysodexo.com>. On July 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the Disputed Domain Names and <experienciabysodexo.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2020 providing the registrants and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and to provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or 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 and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint on July 9, 2020 regarding the Disputed Domain Names and filed a separate complaint for <experienciabysodexo.com>.

On July 15, 2020, the Center confirmed to the Registrar that a separate complaint has been filed for <experienciabysodexo.com> and received the confirmation from the Registrar on July 16, 2020 that the Disputed Domain Names would remain locked during the proceeding.

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 July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020,

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 19, 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

Founded in 1966, the Complainant is a French company that is one of the world’s largest food services and facilities management companies. The Complainant has 470,000 employees serving 100 million consumers in 67 countries worldwide. The Complainant provides a wide range of services under its trade name and trademark SODEXO. From 1966 to 2008, the Complainant used the name and trademark SODEXHO to promote its business under the SODEXHO mark and trade name. In 2008, the Complainant simplified the spelling of its mark and trade name to SODEXO and also changed its logo to reflect the new spelling. The Complainant provides a suite of services comprised of on-site services, benefit and reward services and personal and home services.

The Complainant owns, among others, the following registered trademarks:

- SODEXO (word and design mark), International Trademark Registration No. 964615, registered on January 8, 2008 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, designating certain jurisdictions worldwide;

- SODEXO (word mark), International Trademark Registration No. 1240316, registered on October 23, 2015 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, designating certain jurisdictions worldwide;

- SODEXHO (word and design mark), International Trademark Registration No. 689106, registered on January 28, 1998 in international classes 16, 36, 37, 39, 41, and 42, designating certain jurisdictions worldwide, including China, where the Respondent is located; and

- SODEXHO (word and design mark), International Trademark Registration No. 694302, registered on June 22, 1998 in international class 9, designating certain jurisdictions worldwide, including China, where the Respondent is located.

The foregoing trademarks will hereinafter collectively be referred to as the “SODEXO Mark”.

The Complainant owns numerous domain names corresponding to and/or containing the mark SODEXO or SODEXHO. For instance, among others, the Complainant owns <sodexo.com>, <sodexobenefits.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.

The Disputed Domain Names <sodexhobenefitsindia.com>, <sodexobenefitscentrr.com> and <sodexoemployeebenefits.com> were registered on March 22, 2020 and resolve to a webpage featuring third party sponsored pay-per-click hyperlinks in connection with benefits or benefits programs, some of which resolve to the Complainant’s competitors.

The Disputed Domain Names <sodexohubreward.com>, <sodexorewardhu.com> and <ssodexorewardhub.com> were registered on March 16, 2020 and resolve to a webpage featuring third party sponsored pay-per-click hyperlinks in connection with loyalty programs, some of which resolve to the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Names are confusingly similar to the Complainant’s trademark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

- the Disputed Domain Names were registered and are being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Names from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the SODEXO Mark.

It is uncontroverted that the Complainant has established rights in the SODEXO Mark based on its many years of use as well as its registered trademarks for the SODEXO Mark in numerous jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the SODEXO Mark.

The Disputed Domain Name <sodexhobenefitsindia.com> consists of the SODEXO Mark in its entirety followed by the dictionary term “benefits” and the geographical term “India”, followed by the generic Top-Level Domain (“gTLD”) “.com”.

The Disputed Domain Name <sodexobenefitscentrr.com> consists of the SODEXO Mark in its entirety followed by the dictionary term “benefits” and a misspelling of the dictionary term “center”, followed by the gTLD “.com”.

The Disputed Domain Name <sodexoemployeebenefits.com> consists of the SODEXO Mark in its entirety followed by the dictionary terms “employee” and “benefits”, followed by the gTLD “.com”.

The Disputed Domain Name <sodexohubreward.com> consists of the SODEXO Mark in its entirety followed by the dictionary terms “hub” and “reward”, followed by the gTLD “.com”.

The Disputed Domain Name <sodexorewardhu.com> consists of the SODEXO Mark in its entirety followed by the dictionary term “reward” and a misspelling of the dictionary term “hub”, followed by the gTLD “.com”.

The Disputed Domain Name <ssodexorewardhub.com> consists of the SODEXO Mark in its entirely except for the addition of a second letter “s”, followed by the dictionary terms “reward” and “hub”, followed by the gTLD “.com”.

It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a dictionary or geographical term, even dictionary terms that are misspelled, as in this proceeding. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Further, “ssodexo” in the Disputed Domain Name <ssodexorewardhub.com> is a misspelling of “sodexo”, the Complainant’s SODEXO Mark, with an additional “s” in the trademark. In addition, the words “centrr” and “hu” in the Disputed Domain Names <sodexobenefitscentrr.com> and <sodexorewardhu.com> are misspellings of “center and “hub”, respectively. Such modifications to a trademark or dictionary terms are commonly referred to as “typosquatting” and seek to wrongfully take advantage of errors by a user in typing a domain name into a web browser. See WIPO Overview 3.0, section 1.9; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Names are confusingly similar to the Complainant’s SODEXO Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s SODEXO Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Based on the use made of the Disputed Domain Names to resolve to pay-per-click pages, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. There is also no evidence that the Respondent is commonly known by the Disputed Domain Names or by any name similar to them.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Respondent has demonstrated bad faith registration and use by attracting, for commercial gain, Internet users to the Respondent’s webpages and creating a likelihood of confusion with the Complainant’s SODEXO Mark. The use of a domain name to attract Internet users to a registrant’s website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s online location for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s use of the significant goodwill in the SODEXO Mark by registering the Disputed Domain Names and using those Disputed Domain Names to misdirect visitors to the Respondent’s websites demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Names under the Policy, paragraph 4(b)(iv).

Second, the Respondent’s registration of the Disputed Domain Name that contain misspellings in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773. The Panel concludes that the Respondent knew about the Complainant’s rights in the SODEXO Mark when it registered the Disputed Domain Names, since the Respondent misdirected users from the Complainant’s website to the Respondent’s webpages by capitalizing on typing mistakes made by users. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”) Furthermore, the use of the Disputed Domain Names to resolve to landing pages with pay-per-click links supports a finding of bad faith under the circumstances of this case.

Finally, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the Complainant’s well-known SODEXO Mark is sufficient evidence of bad faith registration and use. See EbayInc. v. Wangming, WIPO Case No. D2006-1107; VeuveClicquotPonsardin, MaisonFondéeen 1772 v. ThePolygenixGroupCo., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Names <sodexhobenefitsindia.com>, <sodexobenefitscentrr.com>, <sodexoemployeebenefits.com>, <sodexohubreward.com>, <sodexorewardhu.com>, and <ssodexorewardhub.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 27, 2020

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