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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. D2021-0316

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”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexoyway.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 February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 March 2, 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 March 5, 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 March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on April 30, 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 was founded in 1966 as “Sodexho Alliance”. It is now one of the largest companies in the world specializing in food services and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. For the fiscal year 2019, the Complainant’s consolidated revenues reached EUR 22 billion.

From 1966 to 2008, the Complainant promoted its business under the trademark and trade name SODEXHO. In 2008, it simplified the spelling of its trademark and trade name to SODEXO.

The Complainant is the owner of many trademark registrations throughout the world for stylized representations of SODEXHO and SODEXO. It is also the owner of a number of trademark registrations for the word trademark SODEXO, including European Union Trademark Registration No. 008346462 (filed June 8, 2009; registered on February 1, 2010).

The Complainant states that it owns numerous domain names corresponding to or containing the strings “sodexo” and “sodexho”, including <sodexo.com> and <sodexousa.com>, which it uses to promote its activities.

The disputed domain name was registered on January 15, 2021. The Complainant has provided screenshots, taken on February 2, 2021, of pages resolving from the disputed domain name. These screenshots show that the disputed domain name resolved to a parking page in French, apparently containing links to websites for restaurants and company canteens that the Complainant says are operated by its competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it is composed of the mark SODEXO and the expression “y way”, which is a misspelling of the expression “my way”; (ii) the addition of the expression “my way” does not significantly affect the appearance or pronunciation of the disputed domain name; and (iii) the risk of confusion or association with the trademark SODEXO is stronger as the Complainant uses the expression “MyWay by Sodexo” for an app, and the public will believe that the disputed domain name comes from the Complainant’s company group or is linked to it.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has no rights to SODEXO as a corporate name, trade name, shop sign, trademark or domain name that are prior to the Complainant’s rights to SODEXO; (ii) the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and trademark SODEXO / SODEXHO; and (iii) 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 disputed domain name and to use it.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the mark SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, and associate it with the characters “[m]y way”, unless seeking to create an association with the Complainant’s trademark SODEXO and the Complainant’s services; (ii) due to the well-known character and reputation of the trademark SODEXO / SODEXHO, the Respondent undoubtedly knew of its existence when she registered the disputed domain name and knew that she had no rights or legitimate interests in it; (iii) previous UDRP decisions recognize that actual knowledge of the complainant’s trademark and activities at the time of the registration of the domain name may infer bad faith; (iv) the Respondent is using the disputed domain name by exploiting the confusion of it with the well-known trademark SODEXO / SODEXHO to attract Internet users and to incite them to click on third party commercial links; (v) it is recognized that bad faith registration and use occurs when a domain name is used to resolve to a parking page containing pay-per-click sponsored links that are based on the trademark value of the domain name; (vi) the registration and use of the disputed domain name by the Respondent can harm the goodwill represented by the SODEXO trademark by confusing consumers, and by interfering with the Complainant’s business by frustrating attempts by Internet users to reach the Complainant’s official websites; and (vii) the Respondent has already been involved in many UDRP cases that ordered the transfer of a domain name registered by her that was reproducing a well-known trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark SODEXO followed by the string “yway”. The Complainant’s word trademark SODEXO is clearly recognizable within the disputed domain name. The addition of the string “yway” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SODEXO word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a parking page with pay-per-click links to third party websites for various goods and services. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its SODEXO word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s SODEXO trademark, given that the Complainant’s trademark has been heavily used and that the disputed domain name consists of the Complainant’s word trademark with the mere addition of the string “yway” (which plausibly could be a deliberate misspelling of the phrase “myway”, a phrase used by the Complainant for an app). Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 name, <sodexoyway.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: May 14, 2021

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