WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Nasir Saeed
Case No. D2021-0590
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Nasir Saeed, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <sotexo.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 25, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2021.
The Center received informal communications from the Respondent on March 29, 2021 and March 30, 2021 to which the Center acknowledged receipt.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 1, 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 a French company specialized in foodservice and facilities management. The Complainant is one of the largest employers worldwide, having 470,000 employees serving 100 million consumers in 67 countries. The Complainant reported revenues of EUR 22 billion in 2019. Also in 2019, Fortune Magazine listed the Complainant as one of the world’s most admired companies.
The Complainant promoted its services under the SODEXHO mark from 1966 to 2008, thereafter simplifying this mark to SODEXO. Said mark is used in connection with on-site services (restaurant, catering and facilities management), benefits and rewards (public benefits, incentives/recognition and employee benefits including, for example, restaurant, transport and fuel vouchers), and personal and homecare services (concierge, homecare, childcare, tutoring and adult education).
According to a list provided by the Complainant, its SODEXO mark is protected in multiple countries worldwide, including the two countries linked to the Respondent, namely the United States and Pakistan. More detailed entries in respect of the Complainant’s marks were supplied for various territories including, for example, International Trademark Registration No. 1240316 for the word mark SODEXO, registered on October 23, 2014, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, and designated in respect of three territories. The Complainant also provided evidence that its business is well-established and extensive in the United States, where the Respondent is based.
According to the relative WhoIs record, the disputed domain name was created on January 22, 2021. The WhoIs entry features a postal address in the United States but a telephone number with the international dialing code for Pakistan. The Complainant noted, when it filed the Complaint, that the disputed domain name did not point to any content. The Panel, by virtue of the general powers articulated inter alia in paragraphs 10 and 12 of the Rules, visited both the website associated with the disputed domain name and the Facebook page mentioned in the Respondent’s email (as to which see the Respondent’s contentions below). The Panel noted that the website associated with the disputed domain name pointed to the Registrar’s parking page, featuring six pay-per-click (“PPC”) advertising links, one of which referenced a line of business of the Complainant, namely “online colleges” (i.e., adult education).
The Respondent’s Facebook page, to which the Panel was directed by the Respondent’s email communications, bore to be a social media entry for an information technology and graphic design business named “Sotexo”, based at an address in Shamsabad, Rawalpindi, Pakistan. Said page, created on the same date the disputed domain name was registered, had 753 “likes” and followers. There were six posts on said page dated between February 14, 2021 and March 11, 2021. Only two of these posts, dated February 14, 2021 and February 20, 2021 respectively, related to actual business activity. Said posts invited the visitor to register for online classes in several software products. The “About” link listed a telephone number and a “Yahoo” email address, above the statement “Software Technologies Experts Organization (SOTEXO)”.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant’s SODEXO mark has a strong reputation and is widely known all over the world, and its well-known character has been recognized in multiple recent cases under the Policy. The only difference between said mark and the disputed domain name is the substitution of the letter “t” in the disputed domain name for the letter “d” in the mark. This is an obvious misspelling of the Complainant’s mark characteristic of typosquatting, which is intended to create confusing similarity.
Rights or legitimate interests
The Respondent has no rights in SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights. The Respondent was not commonly known by the disputed domain name prior to the adoption and use of the SODEXO mark by the Complainant. The Respondent has no affiliation to the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or its affiliates to register and use the disputed domain name.
Registered and used in bad faith
The Complainant’s SODEXO mark is purely fanciful and nobody could legitimately choose this word, or any variation thereof, unless seeking to create an association with the Complainant and its activities. The Complainant’s mark is well-known and according to the Complainant the Respondent knew of its existence when it registered the disputed domain name and intended to benefit commercially from association with it. The Policy recognizes that such actual knowledge of the Complainant’s mark and activities may allow an inference of bad faith to be made.
It is very likely that the Respondent registered the disputed domain name for the purpose of creating confusion with the Complainant's mark to divert or mislead third parties for the Respondent’s illegitimate profit. The Policy recognizes that passive holding of a domain name does not prevent a finding of bad faith. In this context, Panels have taken into consideration the strong reputation and well-known character of the Complainant’s mark, the lack of evidence provided by the Respondent of any good faith use with regard to the disputed domain name, and the (almost) identity of the disputed domain name with the Complainant’s name and mark intended to divert or mislead potential web users from the Complainant’s website. Bad faith may also result from the threat of an abusive use of the disputed domain name.
The Respondent sent four informal communications to the Center by email, the first on March 29, 2021 and the remaining three on March 30, 2021. The emails concerned bear to be issued from the registrant email address shown on the WhoIs record for the disputed domain name. The emails are short and are quoted below verbatim:
“I don’t understand what is this about, i purchased this domain from GoDaddy for a friend who want to start a business with this names, i got notice from DHL and a document was sent on wrong GoDaddy address, please let me know the issue please.
“I purchased this domain from godaddy as it was available to purchase, godaddy doesn’t stop me from purchasing if I am purchasing it for my wife or my father, so I don’t understand the issue, can you tell me what is the compliant?, if a domain is available anyone should be able to purchase it, Attached is the order receipt.
“I just searched and found your email correspondence In junk email, So basically the issue is that the name sotexo is similar to another business name? so is the other business interested in acquiring this domain from me ?
“This is to add to our conversation that we had no idea about a company with name Sodexo and me and my friend just wanted to start an IT company and here is our Facebook page https://www.facebook.com/sotexo and you can clearly see that its an IT company being formed in Pakistan and the website design is under process.”
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There are two parts to the first element inquiry under the Policy. The Complainant must first demonstrate that it has rights in a trademark. Secondly, the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to such mark.
The Panel is satisfied that the Complainant has rights in the SODEXO registered trademark as described in the factual background section above. Comparing this mark to the disputed domain name, the Panel agrees with the Complainant that the disputed domain name is only one letter different in its second level, with the substitution of a letter “t” for the letter “d” in the Complainant’s mark. The difference is insufficient to avoid a finding of confusing similarity in that the disputed domain name contains an obvious misspelling of the Complainant’s distinctive mark. Sufficiently recognizable aspects remain despite the letter substitution. The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded for the purposes of comparison with the relied-upon mark.
The Respondent’s informal emails do not directly address the question of identity or confusing similarity.
In all of the above circumstances, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent has no prior rights in the SODEXO mark as a corporate name, trade name, shop sign, mark or domain name, that the Respondent was not commonly known by the disputed domain name, and that the Respondent has no affiliation with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or its affiliates to register and use the disputed domain name. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name.
Before examining the Respondent’s submissions, the Panel notes that the Respondent did not file a formal Response in this case but merely submitted four brief emails. These were received immediately following the Center’s notification of the Respondent’s default. However, due to their proximity to the deadline and in order to provide the Respondent with a fair opportunity to present its case (see paragraph 10(b) of the Rules) the Panel will consider these. Nevertheless, the Panel has also noted that the Respondent’s submissions are not procedurally compliant, in that they lack the certification of accuracy and completeness required by paragraph 5(c)(viii) of the Rules. In these circumstances, when weighing the Parties’ respective cases in accordance with paragraph 10(d) of the Rules, the Panel will treat the contents of the Respondent’s emails with some caution and where appropriate may seek independent verification from publicly available resources or objective materials within the record.
Taken as a whole, the Respondent’s submissions appear to be confused and are lacking in essential details. Initially, the Respondent suggests that it registered the disputed domain name for a friend who wished to start a business. In its second email, however, the Respondent observes that the Registrar will not stop it from registering a domain name if it is doing so for its wife or father. This observation seems at odds with the first email. Either the Respondent acquired the disputed domain name for its friend to start a business, or on behalf of its wife, or for its father, but clearly not for all these purposes.
In its third email, the Respondent asks if the Complainant might be interested in acquiring the disputed domain name. This seems a curious enquiry to make if the Respondent had registered the disputed domain name on behalf of a friend who wished to start a business or for a family member. Its inconsistency with the two previous communications, and the mention of a possible sale of the disputed domain name itself, suggests to the Panel that the Respondent’s motivations in registering the disputed domain name are not fully and transparently presented.
The Respondent’s fourth and final email does not revisit the question of sale of the disputed domain name. Instead, and only then the Respondent introduces the fact that it registered the disputed domain name in order to use it for an IT company, which it has founded with its friend (as exemplified by the Faceboo” page). This submission could give rise to a case in terms of paragraph 4(c)(i) of the Policy if the Respondent were found to be making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Equally, it might suggest that the Respondent seeks to make out a case in terms of paragraph 4(c)(ii) of the Policy that it has been commonly known by the disputed domain name.
Taking paragraph 4(c)(i) first, the Panel notes that the explanation has been tendered by the Respondent not at the outset of its correspondence but as the culmination of a series of four brief emails, each with its own unique response which is wholly or partially inconsistent with the others. The Respondent began by stating that the disputed domain name was purchased for a friend who wished to start a business. There was no mention of the Respondent also being engaged in this business until the fourth email. It seems very unlikely to the Panel that the Respondent would not mention its own involvement in the business at the outset if that had been the genuine reason for registration of the disputed domain name.
In the third email, the Respondent asked whether the Complainant might be interested in purchasing the disputed domain name. This seems an unlikely question to ask if the Respondent and its friend were already engaged in preparations to use the disputed domain name for the alleged IT company and were currently investing time, resources, or both in the alleged development of a commercial website. Importantly, the Respondent produces no examples of any demonstrable preparations to use the disputed domain name for this purpose other than the Facebook page. No business plan, no business registration paperwork, no draft designs for the alleged business website, nor even any prior communications between the Respondent and its friend regarding the proposed business. Indeed, the Respondent’s friend’s identity is not even disclosed and the Respondent provides no detail regarding itself, or its friend, or any background in IT (even for example a LinkedIn profile), which they might have. At least some of this information would be readily to hand in the case of a genuine business.
This leaves only the Respondent’s Facebook page for consideration on the question of “demonstrable preparations”. Given the ease with which such a social media page may be created, the Panel is unwilling to accept that the limited entries before it – by themselves – could be considered sufficient to show a bona fide intent to provide goods or services. In the absence of any other supporting evidence whatsoever, and on the balance of probabilities, it is more likely that the Facebook page represents an attempt to justify the registration of the disputed domain name.
Turning to the alleged goods and services themselves, the Panel also notes that the Facebook page does not promote the business of an IT company as such but rather an entity offering training in certain business software packages. This appears to place the Respondent in competition with the Complainant, contrary to the Respondent’s submission in the fourth email. The Complainant indicates that one of its divisions provides tutoring and adult education services. Its SODEXO trademark (both well-known and distinctive, as accepted by numerous previous panels under the Policy) is registered in respect of the relevant class. This suggests that the Respondent’s offering of adult education services under the name “Sotexo” could not be regarded as a bona fide offering of goods or services even if the Panel had accepted that the Facebook page was not pretextual.
The Panel notes the presence of a line on the Respondent’s Facebook page, which suggests that “Sotexo” may have been intended as an acronym for “SOftware TEchnologies eXperts Organization” (Panel’s capitalization emphasis). The Panel notes that the Respondent made no reference to the alleged acronym in its emails and that the line on the Respondent’s Facebook page is provided without explanation or context. Crucially, there is no information before the Panel as to when this entry was made and whether it dates from before or after the Complaint was filed. In the Panel’s view, the alleged acronym (again, not raised by the Respondent, but carefully considered by the Panel) confers no merit upon any claim of rights or legitimate interests in the disputed domain name. If it were part of the genuine background to the Respondent’s selection of the disputed domain name, the Panel would have expected the Respondent to have mentioned this in its emails. In any event, while it is theoretically possible to derive such an acronym from the chosen words, the Panel considers that “Software Technologies Experts Organization” is not a particularly natural phrase. The acronym itself is only reached by a relatively specific route involving the first two letters from the first two words, the second letter of the third and the first letter of the last. In these circumstances, it has more than a slight flavor of having been reverse-engineered in order to fit the narrative put forward in the Respondent’s fourth and final email to the Center.
Finally, the Panel turns to the question of whether the Respondent has been commonly known by the disputed domain name in terms of paragraph 4(c)(ii) of the Policy. As the Complainant notes, and the Respondent does not dispute, the Respondent’s use of the name “Sotexo” does not predate the Complainant’s longstanding registration and extensive use of the SODEXO mark. The disputed domain name was registered recently, on January 22, 2021. There is no evidence of any prior use of the name “Sotexo” by the Respondent, nor does this name feature in the registrant details on the WhoIs record for the disputed domain name. In fact, the only use of the name by the Respondent appears to be on the Respondent’s Facebook page. This consists of a handful of entries all post-dating the registration date of the disputed domain name. Accordingly, there is no material before the Panel suggesting that the Respondent has been commonly known by the disputed domain name.
In all of the above circumstances, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case on this topic and therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Complainant notes that its SODEXO mark is purely fanciful and is well-known, such that nobody could legitimately choose a variation of this word unless seeking to create an association with the Complainant and its activities. The findings of multiple panels in a significant number of past cases under the Policy appear to bear this out. The Respondent does not seek to take issue with those assertions. While it does deny prior knowledge of the Complainant, such denial loses some credibility given the reservations already expressed by the Panel regarding apparent mutual incompatibilities within its submissions. This is exacerbated by the Respondent’s lack of certification in terms of paragraph 5(c)(viii) of the Rules.
The record shows that the Complainant is a very prominent company worldwide, is highly active in the United States, where the Respondent appears to be based, and likewise holds 10 trademark registrations in Pakistan (which is where the Respondent’s Facebook page claims to hail from), all of which were registered some seven years before the Respondent’s alleged IT business was established. It therefore seems very unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights, and thus the present circumstances appear to indicate opportunistic bad faith on the Respondent’s part. In terms of the Respondent’s intent to target the Complainant, of greatest significance is the fact that upon being notified of the Complaint, instead of describing the background to the founding of its alleged business, the Respondent’s reaction was to ask if the Complainant might be interested in purchasing the disputed domain name. This is suggestive of registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy.
The Panel has also noted the fact that although the Respondent claims to operate an IT company, it is in the business of adult education as demonstrated by its Facebook page. This raises a reasonable inference that it may have registered the disputed domain name primarily to disrupt the business of a competitor in terms of paragraph 4(b)(iii) of the Policy. Even if such disruption was not its primary purpose, it seems reasonable to the Panel to infer from the facts and circumstances of this case that the Respondent was seeking to benefit from an association with the Complainant by way of an obvious typographical variation of its mark. The Panel does not accept that the Respondent came by its alleged acronym independently, given its flavor of reverse-engineering (described above) to fit the Respondent’s own narrative. In these circumstances, it is reasonable to infer an intent on the Respondent’s part to benefit commercially from a likelihood of confusion with the Complainant’s mark in violation of paragraph 4(b)(iv) of the Policy.
Finally, the Panel has identified the fact that the disputed domain name is no longer passively held but is displaying a parking page featuring a link to “online colleges”, namely adult education, which is one of the focuses of the Complainant’s business. While the Respondent may not necessarily have generated such content itself, it is a well-established principle in cases under the Policy that the registrant of a domain name is responsible for the content appearing on the associated website, even if generated automatically and/or by a third party. It is clear to the Panel that the Respondent took no steps to suppress such content following notification of the Complaint.
Taking all of the above matters together, the Panel considers that there is ample evidence of registration and use in bad faith in the present case. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <sotexo.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: April 15, 2021