WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-2216
1. The Parties
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Domains By Proxy, LLC, United States of America (“U.S” or “United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexo-namaximo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 Complainant on August 31, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 5, 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
Complainant is French company that specializes in food services and facilities management. Complainant has operated since 1966, and has offered its services under the mark SODEXO since at least 2008. Complainant owns various trademark registrations globally for the SODEXO mark. These include European Union Trade Mark No. 006104657 (registered June 27, 2008); and International Registration No. 1240316 (registered October 23, 2014).
Complainant also owns domain names that incorporate its SODEXO mark, including <sodexo.com> and <sodexo.pa>. Complainant uses the associated website to connect with consumers, and to inform them of its products and services. As part of its services to consumers, in 2018, Complainant entered into a partnership with International Business Machines Corporation (“IBM”) for a service offered under the mark MAXIMO.
The disputed domain name <sodexo-namaximo.com> was registered on July 20, 2020.
The disputed domain name is linked to a website that redirects to links and websites offering online gambling.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the SODEXO mark, and that the mark is well-known to consumers, since Complainant has over 100 million consumers in 67 countries, and significant annual revenues totaling over EUR 22 billion in Fiscal Year 2019. Complainant further contends that Respondent has incorporated the SODEXO mark into the disputed domain name, and added to it the mark MAXIMO, which is a service with which Complainant has formed a partnership. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith to profit from the good will of Complainant’s mark for Respondent’s own commercial gain. Complainant further alleges that Respondent has engaged in a pattern of conduct that establishes bad faith under the UDRP.
Respondent did not reply to Complainants contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel finds that it is.
The disputed domain name incorporates in full Complainant’s SODEXO mark. The Panel notes that the disputed domain name also contains the term “maximo”. Prior UDRP panels have agreed that supplementing Complainant’s trademark with another trademark does not, by itself, “avoid a finding of confusing similarity” under the first UDRP element. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12. See, for example, Chevron Corp. v. Young Wook Kim, WIPO Case No. D2001-1142. In that case, the Panel stated as follows:
“The Panel is aware that another petroleum company’s famous mark, viz. ‘Texaco’, also is contained in the disputed domain name and that Texaco is not a party to this proceeding. However, the Panel finds the Complainant nonetheless satisfies the requirements of the Policy at 4a(i): ‘your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.’ In this case, the Panel finds the Respondent’s domain name, <chevron-texaco.com> is confusingly similar to the Complainant’s Chevron mark.”
Here, the disputed domain name consists of Complainant’s mark SODEXO, along with the mark MAXIMO, which is a service with which Complainant has a commercial partnership, along with a hyphen and the letters “na”, which do not appear to have a commercial or source-identifying significance in this context. Despite such additions, the Complainant’s mark SODEXO remains clearly recognizable within the disputed domain name. The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. In that regard, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. See WIPO Overview 3.0, section 2.1.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has linked the the disputed domain name to a website that redirects to links and websites offering online gambling.
The Panel further notes that Complainant has submitted evidence that Respondent has engaged in a pattern of registering domain names that have been transferred or cancelled with a finding of bad faith by prior UDRP panels. These include, among others, domain names that incorporate Complainant’s SODEXO mark.
The Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 <sodexo-namaximo.com> be transferred to Complainant. In making this determination, the Panel notes that the disputed domain name appears to contain a mark owned by a third party. Complainant has indicated that it has a partnership for the involved service. Therefore, in accordance with Paragraph 1.12 of WIPO Overview 3.0, the Panel orders the transfer of the disputed domain name without prejudice to any third-party rights.
Date: October 16, 2020