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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SODEXO v. Ashutosh Dwivedi, Food & Beverages

Case No. D2020-2686

1. The Parties

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

The Respondent is Ashutosh Dwivedi, Food & Beverages, India.

2. The Domain Name and Registrar

The disputed domain name <sodexomumbai.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 October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 October 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 October 30, 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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on December 18, 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 one of the largest companies in the world specializing in food services and facilities management. The Complainant has 470,000 employees serving 100 million consumers in 67 countries, including India. The Complainant currently operates under the trademark SODEXO (the “Mark”).

The Complainant owns numerous Mark registrations, including but not limited to:

1. International trademark registration No. 964615 filed on January 8, 2008 under priority of the French trademark registration No. 07 3 513 766 of July 16, 2007, renewed in 2018, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

2. International trademark registration No. 1240316 filed on October 23, 2014 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

3. European Union Trade Mark (EUTM) Registration filed on June 8, 2009 registered on February 1, 2010 under No. 008346462 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

4. European Union Trade Mark (EUTM) Registration filed on July 16, 2007 registered on June 27, 2008 under No. 006104657, renewed in 2017, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

5. International trademark registration No. 1195702 filed on October 10, 2013 based on CTM registration No.011138501 of August 23, 2012 in international classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

6. European Union Trade Mark (EUTM) Registration filed on August 23, 2012 registered on January 22, 2013 under No. 011138501 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

7. Indian trademark filed and registered on December 28, 2007 and registered under No. 1635770 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42.

8. Indian trademark filed and registered on February 19, 2013 and registered under No. 2480740 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.

The Complainant owns numerous domain names incorporating or containing the Mark. The Complainant, and its affiliates, promotes its business activities under the following domain names including, but not limited to, <sodexo.in>, <sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <sodexho.fr>, and <sodexho.com>.

The Respondent registered the disputed domain name on September 1, 2020. The Respondent resides in India according to the information provided to the Registrar by the Respondent. At the time of filing the Complaint, the disputed domain name resolved to a parking page displaying links to websites offering services in competition with the Complainant. The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name wholly incorporates the Mark in combination with the city name “mumbai”. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has never been known by the Mark and there is no evidence of any bona fide business by the Respondent using the Mark or the disputed domain name. The disputed domain name redirects to a landing site that offers a variety of links to websites offering products and services. Finally, the Complainant asserts the disputed domain name was registered and used in bad faith to attract unsuspecting Internet users to the Respondent’s website. The Complainant contends the Respondent is using the disputed domain name to divert Internet traffic to unrelated websites offering competing and similar services to those of the Complainant, for the purpose of achieving commercial gain, which constitutes bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The disputed domain name is composed by adding the Indian city name “Mumbai” as a suffix to the Complainant’s Mark. The addition of a geographical term, such as the well-known city Mumbai, to a registered trademark will not avoid a finding of confusing similarity. Automotive Exchange Private Limited v. Hundraj Haryani, WIPO Case No. D2015-1394 (transferring <carweleindia.com> and <carwalemumbai.com>; F. Hoffmann-La Roche AG v. Mihail S Lebedev, WIPO Case No. D2017-1369 (transferring <buyacccutaneonlinerx.org>); Sodexo v. DomainJet, Inc., Jack Sun, WIPO Case No. D2103-2187 (transferring <sodexogroup.com>).

Moreover, the wholesale incorporation of the Complainant’s Mark into the disputed domain name is sufficient in this case to establish confusing similarity for the purposes of the Policy. Yellow Corporation v. MIC, WIPO Case No. D2003-0748; Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Complainant has thus established a prima facie case which has not been rebutted by the Respondent. F.Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246; see also WIPO Overview 3.0, section 2.1. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and used in bad faith.

The Panel finds on the evidence presented that the Respondent registered the disputed domain name to lure and attract Internet users to the Respondent’s website for commercial gain. The Panel finds that the Respondent was aware of the Complainant’s Mark and that the Respondent registered the disputed domain name in bad faith using the Complainant’s Mark to attract Internet users to the Respondent’s website.

It strains credulity to believe that the Respondent was unaware of the Complainant’s well-known Mark and willy-nilly composed the disputed domain name by adding a famous city name to the well-known Mark when there is no evidence that the Respondent has conducted any bona fide business before or after the registration of the disputed domain name. Sodexo v. Wis INC, WIPO Case No. D2019-2185 (transferring <sodexoconsultasaldo.com>). The registration of the disputed domain name was designed to confuse Internet consumers. Bayer Intellectual Property GmbH v. Super Privacy Service LTD c/o Dynadot / Rose Irinco Mercado, WIPO Case No. D2020-0913 (transferring <resochin.net.); Bayer Intellectual Property GmbH v.hua feng, WIPO Case No. D2019-1261 (transferring <canestenv.com>); see also WIPO Overview 3.1.4.

An elementary Internet search would have disclosed the Complainant’s Mark. The Mark is sufficiently distinctive and well-known such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The fact that the disputed domain name currently does not resolve to an active website does not prevent a finding of bad faith.

The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <sodexomumbai.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: January 1, 2021

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