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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-1158

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 <sodexorewardhud.com> (the “Disputed Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2021.

The Center appointed Mariya Koval as the sole panelist in this matter on July 4, 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, founded in 1966, is one of the largest companies in the world specialized in food services and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. The Complainant provides a wide range of services under its trademark SODEXO (the “SODEXO Trademark”) through an offer of on-site services, benefit and reward services as well as personal and home services. The Complainant is listed as one of “The world’s Most Admired Companies” by FORTUNE Magazine.

The Complainant is the owner of numerous SODEXO Trademark registrations in many jurisdictions around the world, among which are:

- International Trademark Registration No. 964615, registered on January 8, 2008, in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;

- European Union Trademark Registration No. 006104657, registered on June 27, 2008, in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;

- European Union Trademark Registration No. 008346462, registered on February 1, 2010, in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;

- Panama Trademark Registration No. 167186-01, registered on December 12, 2007 in respect of goods in class 9;

- Panama Trademark Registration No. 167190-01, registered on December 12, 2007 in respect of services in class 35.

The Complainant has a significant online presence, it operates different domain names reflecting its SODEXO Trademark for sale and promotion of its goods, inter alia: <sodexo.com>, <sodexo.pa>, <sodexo.fr>, <sodexo.es> and many others.

The Disputed Domain Name was registered on October 19, 2020. At the date of this Decision, the Disputed Domain Name resolved to a parking page containing only sponsored links which resolve to third-party sites., mainly with a content in Russian and Ukrainian languages. According to the evidences presented by the Complainant the Disputed Domain Name resolves to a parking page featuring links connecting to competitor’s websites for meal cards; these websites are in French. Therefore, depending on which country the Internet users access the website under the Disputed Domain Name, it resolves to different parking pages in different languages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that from 1966 to 2008 it promoted its business under the SODEXHO trademark; but in 2008 it changed this trademark to SODEXO Trademark. The Complainant’s Trademark has a strong reputation and is widely known all over the world. The Complainant provides a wide range of services under its SODEXO Trademark through an offer of on-site services, benefit and reward services as well as personal and home services. The Complainant’s SODEXO Trademark is registered in numerous countries of the world. The Complainant is widely established in Panama where the Respondent could be located.

The Complainant further asserts that the Disputed Domain Name is confusingly similar to its SODEXO Trademark in view of the Disputed Domain Name is composed of the SODEXO Trademark associated to the elements “reward” and “hud”. The element “hud” in the Disputed Domain Name is perceived by the public as an obvious misspelling of the word “hub”. In the Disputed Domain Name, the SODEXO Trademark keeps its individuality and is clearly perceived by consumers as the predominant part. The risk of confusion or association of the Disputed Domain Name with the SODEXO Trademark is stronger as the SODEXO Trademark is precisely used by the Complainant for benefits and rewards services. Moreover, the Complainant is the owner of the domain name <sodexorewardhub.com> to propose its benefits and rewards services called “REWARD HUB”. Due to the identical reproduction of the SODEXO Trademark, the public will believe that the Disputed Domain Name comes from the SODEXO group or is linked to the Complainant in so far as it specifically renders services specialized in employee benefits.

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Namebecause he has no rights to the SODEXO mark as corporate name, trade name, shop sign, trademark 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 Trademark by the Complainant. Moreover, 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 further asserts that the Disputed Domain Name was registered in bad faith due to the well-known character and reputation of the SODEXO Trademark, particularly in Panama, where he seems to be located, the Respondent most likely knew of its existence when he registered the Disputed Domain Name and knew that he had no rights or legitimate interests in it. The word SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.

The Respondent is using the Disputed Domain Name in bad faith by exploiting the confusion with the well-known SODEXO Trademark to attract Internet users and to incite them to click on third commercial links that is then an intentional attempt to attract, for commercial gain, Internet users to other unrelated websites.

The unauthorized use and registration of the Disputed Domain Name by the Respondent to attract and to redirect Internet users to the Respondent’s parking website and to websites of the Complainant’s competitors are solely for the purpose of achieving commercial gain and then constitute bad faith registration and use. Moreover, the Internet users who have a legitimate interest in the SODEXO group could have been then exposed to these parking services proposing advertising links to websites of the Complainant’s competitors. This may not only be confusing for the consumers, but this can also create a dilution of the SODEXO Trademark. The registration and use of the Disputed Domain Name by the Respondent can harm the goodwill represented by the SODEXO Trademark and company name by confusing consumers as well as potential consumers and interfering with the Complainant’s business by frustrating attempts by Internet users to reach the Complainant’s official websites. Bad faith may be also deducted from the fact that the Disputed Domain Name was anonymously registered.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has properly asserted its rights in the SODEXO Trademark due to the long use and number of registrations globally. The SODEXO Trademark has been continuously and extensively used for more than 12 years. The Panel agrees with the Complainant that the Trademark has a strong reputation and is widely known all over the world. Previous UDRP panels acknowledged the SODEXO Trademark as well-known.

The Disputed Domain Name reproduces the SODEXO Trademark in its entirety in combination with the dictionary terms “reward” and “hud” and the generic Top-Level Domain (“gTLD”) “.com”. According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known SODEXO Trademark, the addition of the dictionary terms “reward” and “hud” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.

It is also well established that the gTLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar.

Also, pursuant to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.

In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than twelve years after the SODEXO Trademark had been registered. The Complainant’s Trademark is well-known throughout the world.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the fact that 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 to register the Disputed Domain Name and to use it.

According to the section 2.5.1 of the WIPO Overview 3.0, where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In this case, the Disputed Domain Name contains the Complainant’s Trademark in its entirety and addition of the terms “reward” and “hud” which, in view of the Complainant operates a domain name <sodexorewardhub.com> to propose its benefits and rewards services, enhances an impression of the Respondent’s relation with the Complainant (that is not consistent with the reality), that, correspondingly, cannot constitute fair use of the Disputed Domain Name.

There is no evidence that the Respondent appears to own any SODEXO trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the SODEXO Trademark being highly distinctive, it is highly unlikely that anybody could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.

Also, taking into consideration the long use of the Complainant’s Trademark, it is impossible to assume that the Respondent was unaware of the Complainant’s Trademark at the time of registration of the Disputed Domain Name.

Furthemore, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Disputed Domain Name resolves to a parking page containing only sponsored links which resolve to third-party sites. The Panel cannot consider such commercial use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the Respondent, namely:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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.

Taking into consideration that the SODEXO Trademark has been in use more than 12 years and that the Complainant has spent huge amounts and efforts for promotion of its Trademark, the Panel considers it is obvious that the Respondent was well aware of the Complainant and the Trademark at the time of registration of the Disputed Domain Name.

The website operated by the Respondent under the Disputed Domain Name comprises a series of “click through” links to other third party websites. The Panel infers that some visitors, once at the Respondent’s website will follow the provided links and “click through” to other sites which offer products or services unrelated to the Complainant and where some of the websites may offer products or services which compete with those of the Complainant. Such use of the Disputed Domain Name cannot be considered as use in good faith.

Furthermore, the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety and differing from the Complainant’s domain name <sodexorewardhub.com> by the only one last letter “d”, is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant’s SODEXO Trademark, for the purpose of attracting Internet users to the competing websites by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it.

According to section 3.1.4 of the WIPO Overview 3.0 UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is of opinion that it is clear that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the well-known Complainant’s Trademark, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondent did not file any statement, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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 <sodexorewardhud.com> be transferred to the Complainant.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

Mariya Koval
Sole Panelist
Date: July 18, 2021

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