WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Privacy Administrator, Anonymize, Inc.
Case No. D2020-3547
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <sodexookcjobs.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the 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 January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.
The Center appointed Jon Lang as the sole panelist in this matter on February 17, 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
Founded in 1966, the Complainant is one of the largest companies in the world specializing in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. It is one of the largest employers worldwide. For fiscal year 2019, consolidated revenues reached EUR 22 billion. The Complainant is listed as one of “The World’s Most Admired Companies” by FORTUNE Magazine.
From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, it simplified the spelling of its mark and name to SODEXO and changed its logo accordingly.
The Complainant provides a wide range of services under its trade name and mark SODEXO (formerly SODEXHO) falling within three categories: on-site services, benefit and reward services and personal and home services.
The Complainant owns numerous domain names corresponding to and/or containing the SODEXO or SODEXHO marks and the Sodexo group promotes its activities under various domain names, including <sodexo.com>, <uk.sodexo.com>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com> and <sodexho.fr>.
The SODEXHO/SODEXO mark is continuously and extensively used and protected in 67 countries. The Complainant owns several trademark registrations including European Union Trade Mark registration no. 008346462 (for SODEXO) registered on February 1, 2010, and International Trademark registration no. 1240316 (also for SODEXO) registered on October 23, 2014.
The Domain Name was registered on February 26, 2020. It resolves to a parking page with links to websites of the Complainant’s competitors.
5. Parties’ Contentions
The following is brief summary of the Complainant’s contentions.
The Domain Name is identical or confusingly similar to the marks SODEXHO and SODEXO in which the Complainant has rights
The marks SODEXHO and SODEXO have a strong reputation and are widely known all over the world as recognised in many WIPO decisions.
The Domain Name is composed of the mark SODEXO together with the letters OKC, followed by the word JOBS.
The letters OKC refer to the NBA basket-ball club “Oklahoma City Thunder”. The public will believe that the Domain Name derives from the Complainant’s group or is linked to it. The mark, SODEXO, maintains its attractive and individual character, and the addition of the abbreviation OKC refers to an eventual partnership between OKC and SODEXO.
It has been recognized by previous UDRP panels, that reproduction of a trademark in a domain name is sufficient to establish confusing similarity, as is the reproduction of a trademark in a domain name composed of two different marks owned by different entities. For instance, in Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, the panel held that the domain name was confusingly similar to the complainant’s mark.
The Domain Name resolves to a parking page with links to competing websites offering services intended to improve the productivity of companies and websites offering recruitment software.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Domain Name has been anonymously registered using a privacy service.
The Respondent, whatever its true identity, has no rights nor legitimate interests in the Domain Name as it has no rights in SODEXO mark.
The Respondent was not commonly known by the Domain Name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO/SODEXHO.
The Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the Domain Name.
The Domain Name was registered and is being used in bad faith
Given the well-known character and reputation of the SODEXO/SODEXHO mark, particularly in the United States where the Respondent seems to be located, the Respondent most likely knew of its existence when registering the Domain Name and knew that he had no rights or legitimate interests in the Domain Name.
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.
Previous UDRP panels have recognized that actual knowledge of a complainant’s trademark and activities at the time of registration of a disputed domain name, may lead to an inference of bad faith.
There is an intentional attempt to attract, for commercial gain, Internet users to competitors’ websites and other unrelated websites by creating a likelihood of confusion with the well-known SODEXO mark.
Internet users who have a legitimate interest in the SODEXO group could be exposed to the parking page and links thereon to websites of the Complainant’s competitors. This may not only be confusing for consumers, but could also lead to trademark dilution.
Moreover, registration and use of the Domain Name by the Respondent could harm the goodwill in the SODEXO mark and the Complainant’s name by confusing consumers and potential consumers, and interfere with the Complainant’s business, by frustrating attempts by Internet users to reach SODEXO official websites.
Bad faith may be also deduced from the fact that the Domain Name was anonymously registered.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
Whilst the Panel shall refer below to the “Respondent”, that should be taken as a reference to the underlying registrant of the Domain Name, who has used Anonymize, Inc. (i.e. the current registrant confirmed by the Registrar) as a privacy or proxy provider.
A. Identical or Confusingly Similar
The Complainant is the owner of the SODEXO and SODEXHO mark trademarks and thus clearly has rights in them.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the SODEXO trademark followed by the letters “okc” which in turn are followed by the word “jobs”.
Accordingly, the SODEXO trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Section 1.7 of WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The SODEXO trademark is incorporated in its entirety within the Domain Name. It is clearly recognizable within the Domain Name. The addition of the letters “okc” and the word “jobs” do not prevent a finding of confusing similarity. The SODEXO trademark is clearly recognizable within the Domain Name, being its first, and its dominant element.
The Panel finds that the Domain Name is confusingly similar to the SODEXO trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. There is no need to also carry out a separate analysis of the Complainant’s SODEXHO mark (or indeed to consider it further below).
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a 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. Here, however, there is no evidence to suggest that the Respondent is commonly known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves (featuring links to third-party websites at least one of which appears to directly compete with the Complainant’s business), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element of which is the Complainant’s well-known SODEXO trademark, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party websites (at least one of which, as already noted, appears to compete with the Complainant’s business). In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. Indeed, Section 2.9 of the WIPO Overview 3.0, provides: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
More generally, in Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. The SODEXO trademark is a coined word. The Respondent would not have stumbled upon it by accident. Clearly it was the Respondent’s intention to create an impression of association with the Complainant.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As already noted, the SODEXO trademark is a coined word. The Respondent must have been aware of the Complainant and its SODEXO trademark and intended, by registration of the Domain Name, to create an impression of association with the Complainant.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The purpose behind registration of the Domain Name appears to have been to attract Internet users to the Respondent’s parking page using a domain name confusingly similar to the Complainant’s SODEXO trademark. In other words, the circumstances envisaged above.
For the sake of completeness, the Panel should add that the fact that links on the website to which the Domain Name resolves might be automatically generated does not prevent a finding of bad faith under the Policy (section 3.5 of the WIPO Overview 3.0).
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sodexookcjobs.com> be cancelled.
Date: March 1, 2021