WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domain Privacy, Above.com Domain Privacy
Case No. D2021-0592
1. The Parties
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Domain Privacy, Above.com Domain Privacy, Australia.
2. The Domain Name and Registrar
The disputed domain name <sodexocarreers.com> (the “Domain Name”) 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 Domain Name. On February 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 4, 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on April 14, 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
Complainant is a French company specializing in food services and facilities management.
Complainant is the owner of the following trademark registrations, among others, alleged to be relevant to this matter:
- SODEXO (stylized), International Registration No. 964615, registered on January 8, 2008 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXO, International Registration No. 1240316 registered October 23, 2014 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXHO (stylized), Australian Registration No. 755152 filed on February 16, 1998 in International classes 09, 16, 36, 37, 39, 41, 42.
- SODEXHO (stylized), International Registration No. 689106 registered on January 28, 1998 in International classes 16, 36, 37, 39, 41 and 42.
- SODEXHO (stylized), International Registration No 694302 registered on June 22, 1998.
- SODEXO, European Union Trademark Registration No. 008346462 registered on February 1, 2010 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXO QUALITY OF LIFE SERVICES (stylized), International Registration No. 1195702 registered on October 10, 2013 in International classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
- SODEXO QUALITY OF LIFE SERVICES, European Union Trademark Registration No. 011138501 registered on January 22, 2013 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
On September 14, 2020, the Domain Name was registered with the Registrar. The Domain Name resolves to a parked website displaying pay-per-click links.
5. Parties’ Contentions
As background, Complainant alleges that it was founded in 1966 and has grown to be one of the largest companies in the world in the field of food services and facilities management. With 470,000 employees serving 100 million consumers in 67 countries, Complainant contends that it is one of the largest employers worldwide. Complainant further asserts that for fiscal year 2019, its consolidated revenues reached EUR 22 billion. Complainant explains that from 1966 to 2008, Complainant used the trademark SODEXHO. In 2008, Complainant simplified the spelling of its mark and name to SODEXO.
Complainant alleges that it used the SODEXO trademark in connection with the three broad categories of services: (1) On-site Services, (2) Benefits and Rewards Services and (3) Personal and Home Services. Complainant explains that “On-site 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. Complainant asserts that “Benefits & Rewards Services” involves Complainant issuing service vouchers and cards for private and public organizations. Complainant further asserts that “Personal and Home Services include childcare, tutoring and adult education, concierge services and home care for dependent persons.
Complainant also alleges that it owns numerous domain names corresponding to and/or containing “sodexo” or “sodexho” that it uses to promote its services, including the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.
Including the above-referenced trademarks, Complainant contends that the SODEXHO / SODEXO trademarks are continuously and extensively used and protected in 67 countries. Collectively, the registered trademark rights in SODEXHO and SODEXO are referred to as the “SODEXO Mark”.
With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s registered SODEXO Mark, which has been determined by several panels to be a well-known trademark. Complainant argues that the only difference between the relevant portion of the Domain Name and the SODEXO Mark is the inclusion of the additional word “carreers” in the Domain Name; however, this additional word is not sufficient to eliminate confusing similarity between the Domain Name and the SODEXO Mark.
With respect to the second element of the Policy, Complainant alleges that Respondent has no rights nor legitimate interests in the Domain Name because it has not used SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to Complainant’s rights. Moreover, Complainant also asserts that Respondent does not have any affiliation, association, sponsorship or connection with Complainant and has not been authorized, licensed or otherwise permitted by Complainant or by any subsidiary or affiliated company to register the Domain Name.
With respect to the third element of the Policy, Complainant alleges that due to the well-known character and reputation of SODEXO Mark particularly in Australia where it is located, Respondent most likely knew of its existence when it registered the Domain Name and knew that it had no rights or legitimate interests in the Domain Name. Complainant further points out that the word “sodexo” is fanciful and that nobody could legitimately choose this word, unless seeking to create an association with Complainant. Complainant asserts that Respondent is attempting to attract, for commercial gain, Internet users to Complainant’s competitors’ websites by creating a likelihood of confusion with the well-known SODEXO Mark. Although Complainant recognizes that in certain cases a pay-per-click site is not bad faith, Complainant asserts that when the disputed domain name resolves to parking pages containing pay-per-click sponsored links based on the trademark value of the domain names, such registration and use has been found to be bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 1.2 . Complainant has provided evidence that it is the owner of at least nine trademark registrations worldwide for the SODEXO Mark.
It is well-established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s SODEXO trademark in its entirety, as the dominant element. The addition of the word “carreers” does not prevent the confusing similarity between the Domain Name and the SODEXO Mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s SODEXO Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Domain Privacy, Above.com Domain Privacy” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name.’”)
Complainant asserts that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the SODEXO Mark in any manner. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a substantive response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Furthermore, the Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in section 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with pay-per-click advertisements that compete with Complainant’s services. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (respondent’s use of the disputed domain name to establish a parking page was “plainly not noncommercial”).
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s lack of a substantive response as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
In this matter, Complainant contends that the registration by Respondent of a domain name, which contains Complainant’s well-known SODEXO Trademark establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that said use of the domain name by someone with no connection to the trademark suggests opportunistic bad faith. See Sodexo v. Larry Johnson, Arvato Global Group, WIPO Case No. D2019-1773 (“Complainant has demonstrated that the SODEXO mark is distinctive and well-known internationally. The Panel thus infers that Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name (<sodexo-global.com>) was registered in bad faith”); LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303. Here, Respondent has placed the Domain Name with a website service that creates links to competing services indicating an intent to trade off the goodwill of Complainant. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent’s choice to register the Domain Name. With no substantive response from Respondent, this claim is undisputed and the Panel infers bad faith registration.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “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”. See Identigene, Inc. v. Genetest Labs., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under Paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name); Virgin Enterprises Limited v. Balticsea LLC / Contact Privacy Inc. Customer 0134432592, WIPO Case No. D2016-2148 (finding that a general offering to sell the domain name is evidence of registration of the domain name in bad faith). Here, Complainant has submitted evidence that Respondent has used the Domain Name in order to direct Internet users to third party websites which, inter alia, offer potential job opportunities for a wide-variety of employers. This is misleading and bad faith use of the Domain Name. Any argument that Respondent may assert that he is not accountable for the infringing content on his website is without merit. Numerous panels have rejected such an argument, holding respondents are still responsible for the content of a parked webpage. Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-1858; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474 (“Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense.”); and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name is more likely than not that Respondent acquired the Domain Name primarily to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Moreover, Respondent is responsible for the infringing content displayed at the website to which the Domain Name resolves.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(ii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sodexocarreers.com> be transferred to Complainant.
John C. McElwaine
Date: April 27, 2021