WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Contact Privacy Inc. Customer 1248852689 and Contact Privacy Inc. Customer 1248852690 /Paulo cesatr vanzella

Case No. D2020-3558

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1248852689, Canada and Contact Privacy Inc. Customer 1248852690, Canada / Paulo cesatr vanzella, Brazil.

2. The Domain Names and Registrar

The disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2020. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2021, 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 January 12, 2021.

The Center sent an email communication in English and Portuguese to the parties on January 8, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names is Portuguese. The Complainant submitted a request for English to be the language of the proceeding on January 11, 2021. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with 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 January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2021.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on February 24, 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 French company (previously called Sodexho Alliance) founded in 1966 and is one of the largest companies in the world specialized in foodservices and facilities management. The Complainant is also one of the largest employers worldwide with 470,000 employees serving 100 million consumers in 67 countries.

For the fiscal year 2019, the consolidated revenues of the Complainant reached 22 billion. Universal Registration Document is enclosed as Annex 4 to the Complaint and a presentation document entitled “Sodexo at a glance 2019” is enclosed as Annex 5 to the Complaint.

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, the Complainant simplified the spelling of its mark and name to SODEXO.

The Complainant’s trademark SODEXO was registered on February 1, 2010. The figurative trademark SODEXHO has been registered inter alia as an international Registration No. 689106 on January 28, 1998 designating several countries in Europe, Asia, and Africa.

The mark SODEXO is used in connection, among others, with the following activities intended to improve the quality of daily life as shown on the Complainant’s website:

On-site Services: these services relate to restaurant and catering services as well as facility management services and workplace services including a wide-range of on-site services such as reception services, technical maintenance and repair, housekeeping, security, laundry, waste management, space management.

Benefits & Rewards Services: the Complainant issues service vouchers and “cards” for private and public organizations in three service categories:

- Employee Benefits to attract, engage, and retain employees (such as restaurant vouchers, transport vouchers, gasoline vouchers, among others),

- Incentives and Recognition to help organizations to reach their qualitative and quantitative objectives (gift vouchers, gift boxes, among others),

- Public Benefits to manage and control the distribution of aid and public subsidies.

The Complainant also owns numerous domain names corresponding to and/or containing the SODEXHO or SODEXO marks: <sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <sodexho.fr>, and <sodexho.com>.

Moreover the SODEXHO / SODEXO mark is continuously and extensively used and protected in 67 countries and the Complaint includes copies of these trademark registrations as Annexes 6 to 13.

The reputation of the mark SODEXHO / SODEXO has been repeatedly recognized by previous UDRP panels in many recent cases:

- Sodexo v. 张存硕 (Cun Shuo Zhang), WIPO Case No. D2020-0312;

- SODEXO v. Contact Privacy Inc. Customer 1246053778 / Edwin Smith, WIPO Case No. D2020-0566;

- SODEXO v. Contact Privacy Inc. Customer 1245764941 / Chivers Michael, WIPO Case No. D2020-0673;

- SODEXO v. Wis INC, Wis INC, WIPO Case No. D2020-0887;

- SODEXO v. WhoisGuard Protected, WhoisGuard, Inc. / Austin Miller, Llyods Limited, WIPO Case No. D2020-0957;

- Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael, WIPO Case No. D2020-0865;

- Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021;

- Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman, WIPO Case No. D2020-1281.

The disputed domain names resolve to inactive pages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met.

The Complainant states that the disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com> are identical or confusingly similar to the marks SODEXHO and SODEXO in which the Complainant has rights.

The Complainant’s evidence is that its mark SODEXHO / SODEXO has a strong reputation and is widely known all over the world and states that WIPO UDRP Panels have already recognized the well-known character of the marks SODEXHO / SODEXO in many decisions.

The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com>.

The Complainant contends that the disputed domain names <sodexonatalaceita.com> and <natalaceitasodexo.com> have been anonymously registered in the name of Contact Privacy Inc. which is a service proposed by Google for protecting personal data.

According to Complainant’s knowledge, the Respondent, whatever its identity, has no rights nor legitimate interests in the disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com> as it has no rights on “sodexo” as a corporate name, trade name, shop sign, mark, or domain name that would be prior to the Complainant’s rights on SODEXO.

The Complainant also asserts that the Respondent was not commonly known by the disputed domain names prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO / SODEXHO.

Finally, the Complainant contends that the disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com> were registered and are being used in bad faith. The sign “sodexo” is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and marks SODEXO.

Due to the well-known character and reputation of the mark SODEXO / SODEXHO, the Complainant argues that the Respondent knew its existence when it registered the disputed domain names, so that the Respondent perfectly knew that it had no rights or legitimate interests in the disputed domain names and that it cannot lawfully use them.

Moreover, the Complainant argues that 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 concerned domain names and to use them.

B. Respondent

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

6. Discussion and Findings

Noting the Respondent did not file a Response, the Panel shall proceed to a decision on the basis of the Complaint. Based on the available record, it looks very clear for the Panel that this case fulfills all the requirements of paragraph 4(a) of the Policy as discussed below.

A. Language of the proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the language of the registration agreement for the disputed domain names is Portuguese.

The Complainant requested English to be the language of the proceeding and the Respondent did not comment on the language of the proceeding.

Considering the Complainant’s request and the fact that the Respondent did not reply to any of the communications sent by the Center, all of which were transmitted in English and Portuguese, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding. Moreover, the proceeding would be unduly delayed if the Complainant was requested to translate the Complaint into Portuguese.

Accordingly, the Panel accepts the Complainant's request for English to be the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has provided evidence of its trademark registrations in relation to the marks SODEXHO and SODEXO.

It has been recognized repeatedly in previous UDRP cases that the whole reproduction of a trademark in a domain name is sufficient to establish confusing similarity: Magnum Piering, Inc. v. The Mudjackers and Garwood S.Wilson, Sr., WIPO Case No. D2001-0903; and Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-1525.

The disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com> are composed of the the mark SODEXO together with the term “natalaceita” (“natal aceita” means “Christmas accept” in English). The Panel finds that the Complainant’s mark SODEXO is clearly recognizable within the disputed domain names. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

C. Rights or Legitimate Interests

The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names <natalaceitasodexo.com> and <sodexonatalaceita.com>.

The Respondent could have demonstrated having rights or legitimate interests in the disputed domain names, by showing any one of the three requirements of paragraph 4(c) of the Policy, which did not happen.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in the disputed domain names lies with the Complainant. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain names and has not acquired any rights or legitimate interests in the SODEXO mark.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimates interests in the disputed domain names which the Respondent has not rebutted. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

D. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain names have been registered and used in bad faith for the following reasons:

The sign SODEXO is purely fanciful and it is reasonable to accept that nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and marks SODEXO.

The mark SODEXHO / SODEXO has a strong reputation and is widely known and its well-known character has been repeatedly recognized by previous UDRP Panels, among others: Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman, WIPO Case No. D2020-1281 and Sodexo v. Registration Private, Domains By Proxy, LLC / Krissa Pucket, WIPO Case No. D2020-1315.

Finally, as per section 3.2.1(viii) of the WIPO Overview 3.0, it is the Panel’s opinion, despite the Complainant arguing that it did not find any meaning in the expression “natal aceita”, that the selection of the disputed domain names by the Respondent had a clear purpose. In fact, the term “natal aceita” means in Portuguese “Christmas accept” which when used in connection with the Complainant’s SODEXO mark can give the idea that during the Christmas period the Complainant’s cards or vouchers are accepted. In this sense, the Panel considers that the Respondent goes further than a simple reproduction of a well-known trademark and uses the Complainant SODEXO mark with the term “natal aceita” in order to misleadingly divert consumers which is a clear demonstration of bad faith.

Additionally, the non-use of the disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding.

Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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 names, <natalaceitasodexo.com> and <sodexonatalaceita.com> be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: March 10, 2021