WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-3085
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States of America (“United States” or “US”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexousadefaulthome.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 November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020 and November 20, 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 November 23, 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 November 27, 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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on January 5, 2021. 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 leading company specialized in foodservices and facilities with more than 470,000 employees serving 100 million consumers in 67 countries.
The Complainant has been using the trademark SODEXO continuously since late 1960 and holds many trade and service mark registrations throughout the world, including European Union Trade Mark registration 008346462 for SODEXO registered on February 1, 2010, and various combined word and logo mark registrations in Panama, including Panamanian trademark registration 167186-01 registered on December 12, 2007.
The Complainant also owns numerous domain names corresponding to and/or containing SODEXO. The Sodexo group promotes its activities inter alia under the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>.
The disputed domain name was registered on August 10, 2020, and at the date of the decision it resolves to a website displaying a pay-per-click (“PPC”) advertising page containing online betting page. According to the Complaint, the disputed domain name was resolving to an apparent malicious website.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is identical or in any case confusingly similar to the Complainant’s trademark SODEXO and the addition of the descriptive words “usa”, “default,” and “home” reinforcing the association of the disputed domain name with the Complainant’s mark as the combination of the words “usa”, “default”, “home” refers to Sodexo’s US official website.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark SODEXO.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent could not ignore the Complainant’s well-known trademark. Furthermore, the Respondent has a history of abusive registrations, wherein the Complainant and other third-party registered trademarks have been incorporated in the domain names. Accordingly, the Respondent has registered and is using the disputed domain name in bad faith. Lastly, the Complainant claims that the use of the Complainant’s trademark SODEXO for a domain name to point to a malicious website or page constitute a bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the SODEXO trademark.
The disputed domain name <sodexousadefaulthome.com> integrates the Complainant’s SODEXO trademark in its entirety, as its dominant element.
The disputed domain name differs from the registered SODEXO trademark by the additional descriptive words “usa”, “home” and “default” and the generic Top-Level Domain (“gTLD”) “.com”. The additional descriptive words “usa”, “home” and “default” would not prevent a finding of confusing similarity under the first element.
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark.
As regards the gTLD, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of a lack of the Respondent’s rights or legitimate interests in the mark. Considering that the Respondent did not reply to the Complainant’s claims, the Respondent did no effort to demonstrate any rights or legitimate interests in the disputed domain name, and has not rebutted the Complainant’s prima facie case. Accordingly, the Panel determines the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention that the trademark SODEXO is without any doubt a well-known trademark. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
It is the Panel’s view that in using such descriptive words “usa”, “home” and “default” together with the SODEXO mark creates an impression that the disputed domain name is in some way connected to the Complainant’s trademarks (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; or Swarovski Aktiengesellschaft v. ‘www.swarovski-outlet.org’, WIPO Case No. D2013-0335).
The Respondent has linked the disputed domain name to a malicious website, and to a website that redirects to links and websites offering online betting, which is unequivocal indication of bad faith registration and use. In particular, in accordance with paragraph 4(b)(iv) of the Policy 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”.
The Complainant has further submitted evidence that the 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 the Complainant’s SODEXO mark.
The Panel finds that the 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 <sodexousadefaulthome.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: January 29, 2021