WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-3426
1. The Parties
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexobenefotscenter.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 December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 December 17, 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 December 21, 2020. In response to a notification by the Center that the amended Complaint was administratively deficient, Complainant filed a second amended Complaint on December 24, 2020.
The Center verified that the Complaint, together with the second 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 1, 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
This proceeding was initiated by Complainant against Respondent that has demonstrated a pattern or practice of registering and abusing Complainant’s trademark. See, e.g., Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580, which involves a domain name highly similar to the disputed domain name at issue in this dispute (also see SODEXO v. Carolina Rodrigues, WIPO Case No. D2020-2475). In the interests of administrative efficiency, this Panel adopts the factual recitation regarding Complainant’s trademark rights from Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra, which is directly relevant to the instant proceeding:
“Founded in 1966, the Complainant is one of the largest companies in the world specialising in foodservice and facilities management. With 470,000 employees serving 100 million consumers in 67 countries, the Complainant is one of the largest employers worldwide. It owns registered trade mark rights in many countries for the SODEXO word mark (previously SODEXHO) and for various combined word and logo marks that incorporate the mark SODEXO. In particular, it owns 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 registration 167186-01. It also owns various domain names including its SODEXO mark, including <sodexo.com> at which it sets out is various services, including, of relevance here, benefits and rewards services for private and public organisations.” Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The creation date for the record of registration of the disputed domain name is September 1, 2020.
Respondent has used the disputed domain name to direct Internet users to a link that elicits a warning message that appears (but falsely) to be associated with Microsoft Windows (using distinctive Windows logo) advising that Windows has been blocked and that unless a call is made to the telephone number provided that Windows will be blocked. When the telephone number is called, an operator requests the Internet user to download software that will allow remote access to the caller’s computer and providing an Access code. The warning message is not associated with Microsoft and/or Windows, and it appears that the purpose of the software download and associated access code are to insert malicious software onto the Internet user’s computer.
Respondent previously has been determined to have registered several domain names identical or confusingly similar to Complainant’s SODEXO trademark, including <sodexorewardhib.com>, <benefitssodexo.com>, <sodexovoya.com>, <sodexobenefifscdnter.com> and <sodexeo.com>, and to have abused Complainant’s rights in its trademark.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark SODEXO and that the disputed domain name is confusingly similar to that trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has no rights in Complainant’s trademark as a corporate name, tradename, shop sign, mark or domain name that would predate Complainant’s rights in its trademark; (2) Respondent was not commonly known by the disputed domain name prior to Complainant’s acquisition of rights in its trademark; (3) Respondent does not have any affiliation, association, sponsorship or connection with Complainant, and has not been authorized licensed or otherwise permitted by Complainant to use its trademark.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) given the well-known character of Complainant’s trademark Respondent must have known of Complainant’s rights when it registered the disputed domain name; (2) Complainant’s trademark is a fanciful term and would not legitimately be chosen by a third party; (3) Respondent has in 2020 been involved in four UDRP disputes with Complainant, each of which resulted in transfer to Complainant; (4) using the disputed domain name to spread malware or a virus amounts to bad faith registration and use; (5) Respondent’s bad faith use of the disputed domain name may injure the goodwill of Complainant in its trademark, and; (6) Respondent is engaging in “mousetrapping” of Internet users for commercial gain.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, telefax and physical address provided in its record of registration. It appears that telefax and express courier delivery could not be completed because of false and/or incomplete information provided by Respondent. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark SODEXO, including by registration at the European Union Intellectual Property Office and the Panamanian Trademark Office, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the SODEXO trademark.
The disputed domain name directly and fully incorporates Complainant’s distinctive trademark. From the standpoint of the Policy, this is sufficient to establish confusing similarity between the disputed domain name and the trademark. The disputed domain name adds “benefotscenter” that combines two common descriptive nouns. There is a typographical error substituting an “o” for an “i”. The added terms do not overcome a finding of confusing similarity, as Complainant’s trademark is a distinctive coined term and the additional terms do not prevent the trademark from being recognizable in the disputed domain name. Moreover, a casual Internet user would be unlikely to notice the typographical error when viewing the disputed domain name. The disputed domain name <sodexobenefotscenter.com> is confusingly similar to Complainant’s SODEXO trademark.
The Panel determines that Complainant has established rights in the trademark SODEXO and that the disputed domain name is confusingly similar to that trademark within the meaning of the Policy.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name to direct Internet users to a link generating a falsified Microsoft Windows warning message and providing telephone contact information inducing users toward a scheme apparently intended to download malicious software does not establish rights or legitimate interests.
Such use by Respondent does not constitute fair or other legitimate use of the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or […] (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site […]”.
Respondent has used Complainant’s distinctive trademark in the confusingly similar disputed domain name to direct Internet users toward a scheme intended to place malicious software on computers, presumably with the purpose of commercial gain and/or some other improper purpose. Respondent has not attempted to justify or otherwise explain its conduct. Respondent has used Complainant’s trademark to intentionally attract presumably for commercial gain and/or some other improper purpose Internet users to an online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of that online location.
Respondent has engaged in a pattern of registering domain names, including the disputed domain name, to prevent Complainant from reflecting its trademark in a corresponding domain name.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4 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 <sodexobenefotscenter.com> be transferred to Complainant.
Frederick M. Abbott
Date: February 14, 2021