WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2021-0472
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexorewarshub.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2021, 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 February 17, 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 19, 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 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 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 Complainat is a French company founded in 1966 which operates in the field of foodservices and facilities management. Between 1966 and 2008, the Complainant operated under the trademark SODEXHO, which has since then been changed to SODEXO.
Currently, the Complainant has 470,000 employees serving 100 million consumers in 67 countries. For fiscal year 2019, the Complainant generated consolidated revenues of EUR 22 billion.
The Complainant holds numerous trademark registrations for SODEXO mark, such as the following:
- the International Trademark Registration No. 964615 registered on January 8, 2008, with priority since July 16, 2007, for SODEXO (stylized), covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 and protected in many jurisdictions worldwide;
- the European Union Trademark Registration No. 006104657 filed on July 16, 2007, and registered on June 27, 2008, for SODEXO (stylized), covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45; and
- the Panamanian Registration No. 167186-01 registered on December 12, 2007, for SODEXO (stylized), covering goods in class 9.
The Complainant owns numerous domain names that include the mark SODEXO, such as <sodexo.com>, <sodexorewardhub.com>, <uk.sodexo.com>, <sodexoca.com> and <sodexousa.com>.
The disputed domain name <sodexorewarshub.com> was registered on December 18, 2020, and, according to the evidence provided in the Complaint, it was used in connection with pay-per-click pages (“PPC”) with sponsored links related to, inter alia, services similar to those offered by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known SODEXO trademark together with the descriptive words “rewars” (which is a mispelling of “rewards”) and “hub”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the SODEXO trademark.
The disputed domain name incorporates the trademark SODEXO with additional terms, “rewars” and “hub”. However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark SODEXO, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark SODEXO, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
The Respondent has used the disputed domain name in connection with a parking page displaying PPC links, promoting services of the Complainant’s competitors. UDRP panels have constantly 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 marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant uses the SODEXO mark since 2008 and such mark is well-known worldwide. Previous UDRP panels have found the Complainant’s mark to be distinctive and well-known around the world. See for example SODEXO v. Perfect Privacy, LLC / Thomas Hill, WIPO Case No. D2021-0403; SODEXO v. Contact Privacy Inc. Customer 1246053778 / Edwin Smith, WIPO Case No. D2020-0566; or SODEXO v. Wis INC, Wis INC, WIPO Case No. D2020-0887.
The disputed domain name was registered in 2020 and reproduces the Complainant’s mark together with the words “rewars” which can derive from “rewards”, and “hub” – both being closely related to the Complainant’s services.
The Complainant also promotes its business under the domain name <sodexorewardhub.com>.
From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name resolves to a parking page providing links to services similar to those offered by the Complainant.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.
Further, the Respondent registered the disputed domain names under a privacy service, provided inaccurate contact information in the WhoIs and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of the Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <sodexorewarshub.com> be transferred to the Complainant.
Date: April 7, 2021