WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Carolina Rodrigues
Case No. D2021-1408
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Carolina Rodrigues, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexobenefgitcenter.com> 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 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 10, 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 May 14, 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 May 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 21, 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 is a limited company registered in France, specializing in food services and facilities management.
The Complainant is the owner of numerous registrations for word and figurative trademarks comprising the mark SODEXO, including for example:
- International trademark number 964615 for a figurative mark SODEXO, registered on January 8, 2008, in numerous classes
- International trademark number 1240316 for the word mark SODEXO, registered on October 23, 2014, in numerous classes
The disputed domain name was registered on April 6, 2021.
The Complainant has submitted evidence that the disputed domain name has resolved to a website featuring links to websites operated by other providers of workplace meals.
5. Parties’ Contentions
The Complainant states that it has 470,000 employees serving 100 million customers in 67 countries around the world, its consolidated revenues in 2019 reaching EUR 22 billion. It provides evidence of its business profile and reputation, including details of its Panama-specific website located at “www.sodexo.pa”. The Complainant submits that, among its business services, it provides benefits and rewards by way of vouchers and cards, including employee benefits, incentives, and public benefits.
The Complainant submits that the disputed domain name is confusingly similar to its SODEXO trademark. It contends that the disputed domain name combines its mark with the ordinary words “benefit” and “center”, although the former of these has been deliberately misspelled by way the insertion of a letter “g” and constitutes “typosquatting”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never licensed or authorized the Respondent to use its SODEXO trademark, that the Respondent has not been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that its mark SODEXO is a fanciful term and that the Respondent can only have registered the disputed domain name, including that mark and a deliberate misspelling, for the purpose of creating confusion with the Complainant’s mark. The Complainant further submits that the Respondent is using the disputed domain name to take unfair advantage of the Complainant’s trademark by redirecting Internet users to websites operated by the Complainant’s competitors.
The Complainant provides evidence that it has brought six previous cases under the UDRP against the same Respondent, between March 2020 and April 2021, all of which have resulted in transfers of the relevant domain names. The Complainant also cites seven other decisions against the Respondent under the UDRP, which it submits were brought by owners of other well-known trademarks.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in respect of the name and mark SODEXO. The disputed domain name comprises that trademark together with the dictionary words “benefit” and “center”, although the former of these terms is misspelled by the insertion of a letter “g”. These additions do not prevent the Complainant’s trademark from being recognizable within the disputed domain name and the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds the Complainant’s trademark SODEXO to be distinctive in nature and notes the Respondent’s combination of that trademark with the misspelled word “benefgit” and the word “center” within the disputed domain name. In the circumstances, the Panel can conceive of no purpose to the disputed domain name other than to confuse Internet users into believing that the disputed domain name is connected with the Complainant and its services, and the Panel finds therefore that the disputed domain name constitutes an instrument of fraud.
The Panel further finds that the Respondent has used the disputed domain name, which is inherently misleading, for the purpose of a website offering links to the websites of other providers of workplace meals who are competitors of the Complainant. The Panel therefore finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel also accepts the Complainant’s evidence that the Respondent has been involved in numerous other cases under the UDRP, brought by both the Complainant and other trademark owners, in which bad faith has been found against the Respondent (e.g., Société des Produits Nestlé S.A. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1725; Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1723). The Panel therefore finds there to be clear evidence of a pattern of bad faith registrations on the part of the Respondent as discussed in e.g. section 3.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.
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, <sodexobenefgitcenter.com>, be transferred to the Complainant.
Steven A. Maier
Date: June 21, 2021