WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Carolina Rodrigues
Case No. D2021-1360
1. The Parties
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Carolina Rodrigues, Panama.
2. The Domain Name and Registrar
The disputed domain name is <sodexobenefitscsnter.com> which is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 those in the Complaint. The Center sent an email communication to Complainant on May 5, 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 May 10, 2021.1
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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2021.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on June 7, 2021. This Panel finds that it was properly constituted. This 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 (société anonyme(SA)) founded in 1966, specialized in foodservices and facilities management.
Complainant has rights over the SODEXO mark for which it holds International Registration No. 1240316, registered on October 23, 2014, and Registration No. 008346462, registered on February 1, 2010, with the European Union Intellectual Property Office, both in classes 9, 16, and 35 through 45.
Complainant has rights over the SODEXO design mark for which it holds Registration No. 006104657 in classes 9, 16, and 35 through 45, registered on June 27, 2008, with the European Union Intellectual Property Office; International Registration No. 964615, in classes 9, 16, and 35 through 45, registered on January 8, 2008; and Registration No. 167186 in class 9, Registration No. 167191 in class 36, and Registration No. 167199 in class 43, registered on December 12, 2007, with the Industrial Property Registry of Panama, among others.
Complainant also has rights over the SODEXHO design mark for which it holds, among others, International Registration No. 694302 in class 9, registered on June 22, 1998.
The disputed domain name was registered on March 29, 2021. Pursuant to the Complaint, the website associated with the disputed domain name was apparently accessible with a password and showed the following text in the French language:
“Pare-feu Windows”, “Windows a été bloqué en raison de l’activité douteuse Veuillez nous appeler dans les 5 prochaines minnutes pour éviter que votre ordinateur ne soit désactivé Contacter le support technique: 09-74-32-[...]”, “Menace Détectée – Trojan Spyware”.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant (previously called Sodexho Alliance) is one of the largest companies in the world and one of the largest employers worldwide, with 470,000 employees serving 100 million consumers in 67 countries. For fiscal year 2019, Complainant’s consolidated revenues reached EUR 22 billion, divided by region as follows: 45% North America, 39% Europe, 16% rest of world. Complainant is listed as one of “The World’s Most Admired Companies” by Fortune magazine.
From 1966 to 2008, Complainant promoted its business under the SODEXHO mark and trade name. In 2008, Complainant simplified the spelling of its mark and name to SODEXO and changed its logo. The SODEXO mark is registered in many countries; it is continuously and extensively used and protected in 67 countries. SODEXO has a strong reputation and is widely known all over the world; several UDRP decisions have recognized the well-known character of the SODEXO mark.
Complainant also owns numerous domain names corresponding to and/or containing “sodexo” or “sodexho”. Complainant’s group promotes its activities under the domain names <sodexo.com>, <uk.sodexo.com>, <sodexo.fr>, <sodexousa.com>, and <sodexho.com>, among others. Complainant is also established in Panama where Respondent is located: “www.sodexo.pa”. As shown in Complainant’s website at “www.sodexo.com”, Complainant provides a wide range of services under its trade name and mark SODEXO through an offer of on-site services (such as restaurant and catering services, facility management services and workplace services), benefit and reward services (such as issue of vouchers and cards for private and public organizations), and personal and home services (such as childcare, concierge services and home care for dependent persons).
The disputed domain name is composed of SODEXO followed by “benefits” and “csnter”. The term “csnter” is a misspelled version of “center”, having replaced the letter “e” with the letter “s”, which is placed just below it on computer keyboards. The addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. In the disputed domain name the sign SODEXO keeps its individuality and is clearly perceived as the predominant part of it, and the risk of confusion or association with the mark SODEXO is stronger as it is precisely used by Complainant for benefits and rewards services.
Respondent has no rights or legitimate interests in the disputed domain name as it has no rights in SODEXO or SODEXHO as corporate name, trade name, shop sign, mark or domain name that would be prior to Complainant’s rights. Respondent was not commonly known by the disputed domain name prior to the adoption and use by Complainant of the corporate name, business name and marks SODEXO / SODEXHO. Respondent does not have any affiliation, association or connection with Complainant and has not been authorized, licensed or otherwise permitted by Complainant or by any affiliated company to register the disputed domain name and to use it.
The disputed domain name is apparently accessible with a password: the web page is written in French and is presented as a Windows official page. But it is not: that is a TechScam2 or a virus. The main pop-up window can be translated as follows: “Windows has been blocked due to suspicious activity. Please call us within the next 5 minutes to prevent your computer from being disabled. Contact technical support: 09-74-32-[...]”. The web surfer thinks that the computer is actually locked. As the page seems to be a Windows official page, the user is then incited to call the phone number mentioned on the page to try to solve the problem. When calling said number, an operator requests the net surfer to download a software allowing him to access the computer, remotely. To do this, he gives a code to the user. Inserting the code is likely to infect the computer or to install a malware/spyware.
The disputed domain name was registered and is being used in bad faith.
SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof unless seeking to create an association with Complainant’s mark and services. Due to the well-known character and reputation of SODEXO, Respondent undoubtedly knew its existence when it registered the disputed domain name and was also informed about Complainant’s activities, so that it perfectly knew that it had no rights or legitimate interests in the disputed domain name and that it cannot lawfully use it.
The connection to the webpage linked to the disputed domain name encourages Internet users to allow a third party, pretending to be a staff member of Windows support, to have direct access to the computer. It is strongly to be feared that such access permits to spread a computer virus or malware. Previous UDRP decisions have held that the use of a domain name for spreading malware or a virus amounts to registration and use in bad faith. The use of Complainant’s mark for a domain name to point to a malicious website or page constitutes evidence of bad faith use of the disputed domain name. Such use tarnishes the distinctiveness and reputation of Complainant’s marks and demonstrates Respondent’s bad faith.
Respondent has already been involved in several UDRP disputes with Complainant. 3 Further, Respondent has already been involved in a lot of UDRP decisions having ordered the transfer of domain names it registered and which were all reproducing well-known marks owned by third parties.4
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the SODEXO mark.
Since the addition of a generic Top-Level Domain (“gTLD”) i.e. “.com” in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the SODEXO mark, albeit followed by the characters “benefitscsnter”. It is clear to this Panel that the SODEXO mark is recognizable in the disputed domain name and that the addition of such characters in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that it has no connection with Respondent, that it has not authorized Respondent to use its marks in a domain name or otherwise, and that the disputed domain name will result in its association with Complainant and its mark. The disputed domain name is highly similar to Complainant’s name and mark and thus it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.5 In the case file, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to possible rights to or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent did not rebut.
Taking into consideration that Complainant’s registration and use of its SODEXO mark preceded the registration of the disputed domain name, and Complainant’s international presence (including in Panama, where Complainant’s business is featured at “www.sodexo.pa”, and where Respondent is domiciled), this Panel is of the view that Respondent should have been aware of the existence of Complainant and its SODEXO mark at the time it obtained the registration of the disputed domain name.
This Panel considers that Respondent’s bad faith clearly results from the fact that several prior UDRP decisions, involving Complainant itself and other mark holders, have been issued against Respondent for abusive domain name registrations.6
Further, there are additional factors in this case that are indicative of Respondent’s bad faith, such as: (i) Respondent is using Complainant’s mark in the disputed domain name (albeit with the addition of some characters) without Complainant’s authorization; (ii) the risk of implied affiliation of the disputed domain name with Complainant and its mark; (iii) Respondent’s use of a privacy service to hide its name and contact details; and (iv) Respondent’s failure to appear at this proceeding.
In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s name and mark, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <sodexobenefitscsnter.com> be transferred to Complainant.
Date: June 21, 2021
1 The original Complaint was filed against “Withheld for Privacy Purposes/Privacy service provided by Withheld for Privacy ehf”, which appeared as registrant in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.
2 Commonly known as technical support scam.
3 Complainant cites, among others, Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132; Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310; SODEXO v. Carolina Rodrigues, WIPO Case No. D2020-2475; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3426; SODEXO v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0237.
4 Complainant cites several WIPO 2020 cases involving “Carolina Rodrigues, Fundacion Comercio Electronico”, as respondent, and third parties as complainants.
5 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”. See also section 2.1 of the WIPO Overview 3.0.
6 See SODEXO v. Carolina Rodrigues, WIPO Case No. D2020-2475: “Complainant prevailed against Respondent in three prior UDRP cases involving the SODEXO trademark. The Panel finds that Respondent has engaged in a flagrant pattern of bad faith registration and use of domain names likely to be confused with Complainant’s marks”. See Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, WIPO Case No. D2020-1178: “The fact that the Respondent has been involved in a large number of previous decisions under the UDRP whether with the Complainant or with third trademark right holders also shows a pattern of bad faith conduct within the meaning of paragraph 4(b)(ii) of the Policy”. See Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3107: “Respondent is a serial offender [...] Respondent is clearly in the business of registering domain names that include the trademarks of others. Following this pattern, the Respondent has registered the Disputed Domain Name using the Complainant’s DISCOVER trademark in order to trade off the Complainant’s reputation (and by so doing, preventing Complainant from registering the Disputed Domain Name). This alone constitutes evidence of registration and use in bad faith”. See also Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, WIPO Case No. D2019-0578.