WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-1735
1. The Parties
Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexobenifitcenter.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 June 2, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 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 June 8, 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 June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 28, 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 Sodexo, a French company founded in 1966, specialized in foodservices and facilities management. Complainant provides a wide range of on-site services, benefit and reward services as well as personal and home services under its trade name and trademark SODEXO. Sodexo is one of the largest companies in the world, with 420,000 employees serving 100 million consumers in 64 countries.
In light of the valuable goodwill and reputation achieved by Sodexo, Complainant has filed several International trademark registrations, in 64 countries where the company offer its services, to ensure its rights over the exclusive use of the brand SODEXO. Some examples are listed below:
December 12, 2007
Panama trademark registrations
n° 167196- 01
(protected in Panama, where the Registrant is located)
International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, respectively
January 8, 2008
International trademark registration n° 964615
International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45
February 1, 2010
European trademark registration n° 008346462
International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45
Complainant is also the owner of several domain names containing the trademark SODEXO, including the domain name <sodexo.com>, which Complainant owns since October 9, 1998, and the domain name with Panama’s extension <sodexo.pa>, which Complainant owns since August 28, 2019. Meanwhile, the disputed domain name <sodexobenifitcenter.com> was registered by Respondent on December 30, 2019 – many years after the registration of Complainant’s trade name, trademarks, domain name <sodexo.com> and right after the creation of the domain name <sodexo.pa>. As evidenced in the Complaint, the disputed domain name was blocked and unable to resolve to a website due to antivirus software that displayed an alert of a “malicious webpage”.
5. Parties’ Contentions
Complainant submits that the disputed domain name is confusingly similar to its registered trademark SODEXO, as well as with its registered domain names <sodexo.com> and <sodexo.pa>. This is because the disputed domain name incorporates the sign SODEXO in its entirety, as the predominant part of the disputed domain name and, therefore, will likely be associated with Complainant’s trademark regardless the addition of the descriptive words “benifit” and “center” in the disputed domain name.
According to Complainant, the words “benifit” and “center” are not sufficient to distinguish the disputed domain name from Complainant’s trademark. On the contrary, the risk of confusion or association with the mark SODEXO would be stronger as the sign SODEXO is widely used by Complainant to provide benefits and rewards services.
This way, Complainant alleges that Internet users would be easily led to think that the disputed domain name is owned by the Sodexo Group or anyhow linked to it, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark SODEXO nor any permission to register the trademark as a domain name.
This is because Respondent is not commonly known by the term SODEXO, does not own a business name or a trademark registration composed by such trademark and is neither making a bona fide offer of products or services. In Complainant’s opinion, the fact that the trademark SODEXO is not a dictionary word, but rather a highly distinctive and well-known name, reinforces the argument that Respondent’s interest in the disputed domain name has an illegitimate nature, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.
At last, Complainant states that the disputed domain name was registered and is being used in bad faith.
Complainant affirms that since the sign SODEXO is not a dictionary word, but purely fanciful, nobody could legitimately choose this word or any variation of it, unless seeking to create an association with Complainant’s activities under the trademark SODEXO.
In addition, Complainant claims that the well-known character and reputation of the trademark SODEXO makes very unlikely that Respondent did not know the company when registered the disputed domain name. This way, Complainant says that Respondent would be aware that he had no rights or legitimate interests in the disputed domain name and only registered it for the purpose of creating confusion with Complainant’s trademark, seeking to divert or mislead third parties for its own benefit.
Also in this regard, Complainant affirms that the disputed domain name is being used by Respondent to host a malicious website or page, what could tarnish the distinctiveness and reputation of Complainant’s trademarks SODEXO, demonstrating a bad faith use by Respondent.
Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules would have been fulfilled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
A. Identical or Confusingly Similar
Complainant has duly proven that it owns prior trademark rights in SODEXO, registered in many jurisdictions, including Panama where the registrant is established, and that the disputed domain name incorporates such trademark in its entirety, with the sole addition of the terms “benifit” and “center”, which does not prevent the finding of a confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Therefore, the Panel considers the requirement of the first element of paragraph 4(a) of the Policy satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s rights over the trademark SODEXO at the time of registration of the disputed domain name, taking into consideration its notoriety, including in Panama where the registrant is located, and the fact that the disputed domain name was registered by Respondent on December 30, 2019, many years after the registration of Complainant’s trade name, trademarks, and domain name <sodexo.com>, and right after the creation of the domain name <sodexo.pa>. Therefore, evidence shows that Respondent was likely aware of Complainant and its well‑known trademark SODEXO, and registered the disputed domain name to take advantage of Complainant’s trademark.
In addition, the Panel notes that in the disputed domain name, the word “benifit” is a common misspelling of the word “benefit”, which is a term related to Complainant’s services. This further supports the finding that Respondent had knowledge of Complainant’s trademark when registering the disputed domain name.
At last, the Complainant has provided evidence, which Respondent has not disputed, that the disputed domain name was blocked and unable to resolve to a website due to antivirus software that displayed an alert of a “malicious webpage”, so Internet users who have a legitimate interest in SODEXO products and services could be exposed to a non-secure connection. Such fact could tarnish the reputation of Complainant’s trademark SODEXO and put Internet users at risk of malware or other fraudulent schemes, demonstrating bad faith use by Respondent. See section 3.4 of the WIPO Overview 3.0.
Therefore, the evidence shows that Respondent was likely deliberately trying to take unfair advantage of or otherwise abuse Complainant’s mark. The fact that Respondent did not present any response to the Complaint reinforces the conclusion that Respondent acted in bad faith.
As such, the 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, the Panel orders that the disputed domain name, <sodexobenifitcenter.com> be transferred to the Complainant.
Gabriel F. Leonardos
Date: August 11, 2021