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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SODEXO v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-0237

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 / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <sodexocareermanorcare.com> and <sodexowesley.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 29, 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 February 3, 2021.

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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for the Respondent filing a Response was February 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on March 3, 2021.

The Center appointed Marylee Jenkins as the sole panelist in this matter on March 11, 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of several trademark registrations for the word marks SODEXO and SODEXHO in multiple jurisdictions including: French Trademark Registration No. 964615 (filed and registered on January 8, 2008) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; French Trademark Registration No. 1240316 (registered on October 23, 2014) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; International Trademark Registration No. 689106 (registered on January 28, 1998) in international classes 16, 36, 37, 39, 41, and 42; International Trademark Registration No. 694302 (registered on June 22, 1998) in international class 9; ; European Union Trademark Registration No. 008346462, (filed on June 8, 2009; registered on February 1, 2010) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; European Union Trademark Registration No. 006104657, (filed on July 16, 2007; registered on June 27, 2008) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. The Complainant is also the owner of the trademark registrations for the word marks SODEXO QUALITY OF LIFE SERVICES: International Trademark Registration for No. 1195702 (registered on October 10, 2013) in international classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45; and European Union Trademark Registration No. 011138501 (filed on August 23, 2012; registered on January 1, 2013) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 (individual and collectively the “Complainant’s Marks”). The Complainant also owns the domain names <sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com> and markets its services and programs through its primary website accessible at the domain name <sodexo.com>.

The Domain Names <sodexocareermanorcare.com> and <sodexowesley.com> were registered on November 13, 2020 and November 23, 2020, respectively. There are websites currently accessible at these Domain Names.

5. Parties’ Contentions

A. Complainant

The Complainant states that SODEXO is a French foodservices and facilities management company, providing its services to 100 million clients in 67 countries. The Complainant states that it has 470,000 employees, making it one of the largest employers in the world. The Complainant further maintains an Internet presence through its primary website at the domain name <sodexo.com> where consumers can view its many service options.

The Complainant states that it owns numerous trademark registrations for the Complainant’s Marks and that none of these registrations have been abandoned, cancelled, or revoked. Based on its extensive use and trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Marks and that the Complainant’s Marks are well known.

The Complainant alleges that the Domain Name <sodexocareermanorcare.com> is confusingly similar to the Complainant’s mark SODEXO and the fact that the Respondent has added the descriptive term “career” to the Complainant’s mark, which is closely linked to and associated with both the Complainant’s brand and the Complainant’s mark, only serves to underscore and increase the confusing similarity between the Domain Name <sodexocareermanorcare.com> and the Complainant’s mark. The Complainant also alleges that the term “manor care” refers to a company that the Complainant provides services to and could confuse the public into believing that the website offers careers at SODEXO at a Manor Care location. The Complainant further alleges that the Respondent uses the domain name <sodexocareermanorcare.com> to point consumers to competitor websites for health related services.

The Complainant alleges that the Domain Name <sodexowesley.com> is confusingly similar to the Complainant’s mark SODEXO and the fact that the Respondent has added the term “wesley” refers to a company that the Complainant provides services to (Wesley Medical Center) and could confuse the public into believing that the website offers careers at SODEXO at a Wesley location. The Complainant further alleges that the Respondent uses the Domain Name <sodexowesley.com> to point consumers to a malicious site.

The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Marks by registering several Domain Names that incorporate the Complainant’s Marks in their entirety and closely related phrases, which demonstrate that the Respondent is using the Domain Names to confuse unsuspecting Internet users looking for the Complainant’s services and career opportunities and to mislead Internet users as to the source of the Domain Names and their websites. The Complainant also alleges that the Respondent has shown a pattern of bad faith registration and use of domain names incorporating the marks of other third parties.

The Complainant alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Names. Additionally, the Complainant notes that it has not licensed, authorized, or permitted the Respondent to register Domain Names incorporating the Complainant’s Marks. Rather, the Complainant notes that the Respondent has neither business relations with nor knowledge of the Respondent and that it has been unable to locate the identity of the Respondent through its research efforts.

The Complainant further alleges that at the time of the registrations of the Domain Names, the Respondent should have known of the existence of the Complainant’s Marks and that the registrations of Domain Names containing well known trademarks constitute bad faith per se. The Complainant then alleges that the Respondent could have chosen these Domain Names for no other reason than to create an impression of an association with the Complainant as the Complainant’s Marks are neither descriptive nor generic. The Complainant alleges that a likelihood of confusion is made even more likely by the addition of the term “career” and the terms referring to Complainant’s clients “manor care” and “wesley”. The Complainant also alleges that the Respondent, at the time of the initial filing of the Complaint, had employed a privacy service to hide its identity, which supports an inference of bad faith registration and use.

The Complainant further alleges that the Respondent’s use of the Complainant’s Marks, or any minor variation of it, strongly implies bad faith. The Complainant alleges that the Domain Name <sodexocareermanorcare.com> directs to a website with links to medical providers that compete with the Complainant’s client Manor Care and that they are pay-per-click sponsored links. The Complainant also alleges that the Domain Name <sodexowesley.com> leads consumers to a malicious site that likely installs a virus or malware. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Marks and that the Respondent should be found to have registered and used the Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Marks.

A review of the second-level domains (“sodexocareermanorcare” and “sodexowesley”) of the Domain Names shows that both second-level domains comprise the Complainant’s mark SODEXO in its entirety. One of the Domain Names incorporates the descriptive term “career” with the Complainant’s client’s name “manor care” as a suffix. The other of the Domain Names incorporates the Complainant’s client’s name “wesley” as a suffix. A review of the Complainant’s trademark registrations for the Complainant’s Marks shows that they are in multiple classes and jurisdictions and that each well pre-dates the Respondent’s registrations of the Domain Names. The inclusions of a descriptive term along with the Complainant’s client’s name or with just the Complainant’s client’s name in the second-level domains do not differentiate these Domain Names from the Complainant’s mark SODEXO.

Based on this uncontested evidence, the Panel concludes that both of these Domain Names are confusingly similar to the Complainant’s Marks in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Marks in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Names, as an individual, business, or otherwise. Rather the uncontested evidence clearly shows that the Complainant had well-established rights in the Complainant’s Marks in multiple jurisdictions that substantially pre-date the Respondent’s registrations of the Domain Names. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent misleadingly diverted consumers to a fraudulent website at the Domain Name <sodexocareermanorcare.com> having pay-per-click links to competitor websites of the Complainant and to a fraudulent website at the Domain Name <sodexowesley.com> in an attempt to have consumers download a virus or malware. Such uses of these Domain Names by the Respondent are not legitimate noncommercial or fair use.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in these Domain Names and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had actual knowledge of the Complainant’s Marks when registering the Domain Names. This finding is supported by the uncontested evidence showing that the registrations of the Domain Names by the Respondent in no way pre-dates the Complainant’s substantially earlier registration dates for the Complainant’s Marks. The Respondent was also clearly aware of the Complainant’s website, its clients and its services when registering the Domain Names. This finding is further supported by the fact that the Respondent registering two Domain Names incorporating the Complainant’s Marks along with the names of two of the Complainant’s clients. The Complainant has further presented sufficient evidence to establish that the Respondent misleadingly and intentionally diverted Internet users to fraudulent websites at these Domain Names for commercial gain and with apparent malicious intent. As the uncontested evidence also shows the Respondent was not making any legitimate noncommercial or fair use of the Domain Names nor was the Respondent ever licensed, authorized, or permitted to register such Domain Names. The Respondent’s pattern of registering multiple domain names in bad faith further support a finding of the Respondent’s bad faith registration and use of these Domain Names.

When considered with the above evidence and findings, the Panel therefore concludes that the Respondent registered and used the Domain Names to intentionally attract, for commercial gain, the Complainant’s clients as well as Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s Marks and its websites as to the source, sponsorship, affiliation, or endorsement thereof and the services offered thereon. The Panel accordingly finds that the Respondent registered and has and is using the Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <sodexocareermanorcare.com> and <sodexowesley.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: April 12, 2021

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