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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. c/o WHOIStrustee.com Limited, Registrant of soedexo.com / Jerry Garcia

Case No. D2020-1878

1. The Parties

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

The Respondent is c/o WHOIStrustee.com Limited, Registrant of soedexo.com, United Kingdom / Jerry Garcia, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <soedexo.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On July 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 July 24, 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 July 28, 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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on September 21, 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’s marks SODEXO, SODEXHO, and SODEXO & Design are registered in many jurisdictions, including the United States, inter alia, by way of International trademark registration No. 964615 for SODEXO & Design, registered on January 8, 2008, with the priority date of French trademark registration No. 073513766 of July 16, 2007, renewed in 2018, for international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; and European Union trademark registration No. 008346462 for SODEXO, registered on February 1, 2010, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.

The Complainant also owns numerous domain names containing the marks SODEXO or SODEXHO, inter alia, <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>. The Complainant is widely established in the United States where the Respondent is located, by way of its web presence at “www.us.sodexo.com/services/food-services.html”.

The disputed domain name was registered on June 17, 2020. At the time of this Decision, the disputed domain name resolves to a parking page with pay-per-click (PPC) links to subjects and traders related to the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant is a French company founded in 1966, formerly called Sodexho Alliance. It is said to be one of the largest foodservice and facilities management companies in the world. It has 470,000 employees serving 100 million consumers in 67 countries. The Complainant provides a wide range of services under its trade name and mark SODEXO (prior SODEXHO) by way of online services, benefit and reward services as well as personal and home services.

According to the Complainant, the marks SODEXHO and SODEXO have a strong reputation and are widely known all over the world and the Complainant points to multiple UDRP decisions where its status as a well‑known mark has been recognized.

The Complainant points out that the disputed domain name is almost identical to the SODEXO mark and the company name Sodexo. The only difference between the mark and the disputed domain name is the addition of the letter “e” between the letters “o” and “d”. The Complainant says that such a difference corresponds to an obvious misspelling of the SODEXO mark, which could be made by an Internet user and is characteristic of typosquatting. That practice is intended to create confusing similarity between the Complainant’s mark and the disputed domain name. Due to the close similarity between the disputed domain name and the SODEXO mark, the public could undoubtedly believe that the disputed domain name comes from or is linked to the Complainant.

The Complainant asserts that the disputed domain name is used to link to a parking page. According to the Complainant’s knowledge, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name prior to the adoption of Sodexo and Sodexho by the Complainant, nor does the Respondent have any affiliation, association, sponsorship or connection with the Complainant. The Respondent 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.

The Complainant points out that on June 11, 2020, it filed a UDRP complaint against the Respondent (Jerry Garcia) in relation to the domain name <sodeoxo.com> (Sodexo v. Super Privacy Service LTD c/o Dynadot / Jerry Garcia, WIPO Case No. D2020-1434). Due to the well‑known character and reputation of the marks SODEXO and SODEXHO, particularly in the United States where the Respondent is located, the Respondent most likely knew of the Complainant’s existence when he registered the disputed domain name and knew that he had no rights or legitimate interests in it.

The Complainant points out that the word “Sodexo” is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant. According to the Complainant, earlier UDRP decisions recognize that actual knowledge of the Complainant’s trademarks and activities at the time of the registration of a domain name invites an inference of bad faith. The Respondent is using the disputed domain name by exploiting the confusion with the well‑known mark SODEXO to attract Internet users and to encourage them to click on third party commercial links. Bad faith registration and use are accepted when the domain names resolve to parking pages containing PPC sponsored links based on the trademark value of the domain names. The Complainant contends that confusion and dilution of the distinctiveness of its marks follow. According to the Complainant, it is well established that failure to undertake a trademark search before registering a domain name may further support a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s SODEXO trademark. However, it differs only in the insertion of the additional “e”. This makes for a virtually unnoticeable change and the Complainant’s mark is clearly recognizable in the disputed domain name. Aurally the difference between “soedexo” and “sodexo” appears to be non-existent.

Therefore, the Panel holds that the disputed domain name is confusingly similar to the SODEXO trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not filed a Response. There is nothing before the Panel to indicate that the Respondent has any legitimate claim to use the mark SODEXO or is commonly known by or under the mark SODEXO. The Respondent has not been authorized to use the trademark SODEXO or to incorporate it in a domain name by the Complainant. The Respondent has also registered the variant <sodeoxo.com> (Sodexo v. Super Privacy Service LTD c/o Dynadot / Jerry Garcia, supra). The Panel finds that cumulative behavior is not consistent with legitimacy or legality. The only use of the disputed domain name is to link to a parking page with hyperlinks to other traders. This is not of the nature of a legitimate noncommercial or fair use of the disputed domain name on the Internet nor a bona fide offering of goods or services, but an attempt to ride on the coattails of the reputation of another party’s mark.

Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The registration of the disputed domain name is a typical instance of typosquatting, registering a domain name comprising another party’s trademark with a small variation that is barely noticeable or amounts to the type of typographical misapprehension an Internet user might labor under. The registration of such a carefully crafted disputed domain name indicates that the Respondent was fully aware of the Complainant and its rights in the mark SODEXO, and its presence and reputation. The fact that the Respondent has also registered the domain name <sodeoxo.com> (Sodexo v. Super Privacy Service LTD c/o Dynadot / Jerry Garcia, supra) is further suggestive of deliberate and knowing adoption of a very slight variation of the trademark of the Complainant as the disputed domain name. This is manifestly in the hope of benefitting from typographical errors made by Internet users searching for the Complainant’s mark and subsequently deriving some financial advantage from click-through links. Such abuse of the commercial reputation of the trademark owner amounts to bad faith use. Moreover, the Respondent’s involvement in Sodexo v. Super Privacy Service LTD c/o Dynadot / Jerry Garcia, supra,suggests a pattern of bad faith conduct.

Therefore, the Panel holds that the disputed domain name was registered and is being used in bad faith.

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 <soedexo.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: October 2, 2020

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