WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-2012

1. The Parties

Complainant is Sodexo, France, represented by Areopage, France.

Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexobefitscenter.com> 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 June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2021.

The Center appointed Scott R. Austin as the sole panelist in this matter on September 16, 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 following facts appear from the Complaint (as amended) and its Annexes, which have not been contested by Respondent.

Complainant, founded in France in 1966 as SODEXHO ALLIANCE, is one of the largest companies in the world providing benefits and reward services, food services, and facilities management, with 420,000 employees serving 100 million consumers in 64 countries and generating in fiscal year 2020, consolidated revenues of EUR 19.3 billion. Complainant with its subsidiaries and affiliates comprising the “Sodexo Group” provides a wide range of “quality of life” services under its trade name and marks SODEXHO, from 1966 to 2008, and SODEXO, since 2008, revised to simplify spelling (collectively, the “SODEXO Mark”). Complainant’s services and programs driving employee engagement provided under the SODEXO Mark include, issuing service vouchers and cards for organizations to use as employee benefits, incentives and recognition, and public benefits to manage the distribution of aid and public subsidies.

Complainant has provided evidence that its SODEXO Mark is well known for its services, including having been listed by FORTUNE Magazine in 2020 as one of “The world’s Most Admired Companies” and in the 2020 Forbes Global 2000 ranking as “#1 France-based Private Employer Worldwide”.

Complainant and its subsidiaries and affiliates which comprise the Sodexo Group are the registered owners of a portfolio of numerous trademark applications and registrations containing the SODEXO Mark covering a range of benefits and reward services, food services and facilities management services in jurisdictions around the world, such as International Trademark Registration No. 447 004 for SODEXO, registered on August 1, 2008; Panama Trademark Registration No. 167186-01 for SODEXO, registered on December 12, 2007; and, European Trade Mark Registration No. 008346462 for SODEXO, registered on February 1, 2010.

Complainant owns numerous domain names corresponding to and/or containing the SODEXO Mark. Complainant uses the domain name <sodexo.com> from which it operates its official SODEXO website at “www.sodexo.com”, to promote the activities of the Sodexo Group and its businesses (the “Official SODEXO Website”) and also promotes its activities with the SODEXO Mark using additional generic Top-Level Domains and country-code Top-Level Domains, including <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.

The disputed domain name was registered on January 14, 2021, and connects to what is known as a malicious “TechScam” virus site where a pop up window warns the user that they have been blocked and to prevent their computer from being disabled the user should call a number provided to obtain assistance from a remote operator. The operator, once called, provides software for the user to download and install to support remote access. It also provides access to infect the user’s computer with a virus or install spyware/malware. The WhoIs record submitted for the disputed domain name shows it is registered with a privacy protection service, “Domain Administrator, Fundacion Privacy Services LTD”, located in Panama City, Panama, and the Registrar has provided nothing further about the identity of the registrant or registrant organization.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will address each of these requirements in turn.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of a valid and subsisting trademark registrations for the SODEXO Mark long prior to the registration of the disputed domain name. As such, Complainant has trademark rights required under the Policy. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Further, Complainant has provided a series of citations to prior UDRP decisions which support the recognition of Complainant’s trademark rights established in the SODEXO Mark as distinctive and well-known worldwide. See, e.g., Sodexo v. 张存硕 (Cun Shuo Zhang), WIPO Case No. D2020-0312; Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael, WIPO Case No. D2020-0865; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021.

With Complainant’s rights in the SODEXO Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” which is functionally necessary for the domain name to be registered) is identical or confusingly similar to Complainant’s SODEXO Mark. See Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146 (TLD irrelevant for confusing similarity determination); WIPO Overview 3.0, section 1.11.

It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

Respondent incorporates Complainant’s SODEXO Mark in its entirety as the initial term in the disputed domain name <sodexobefitscenter.com>, with no change in its appearance or pronunciation. The mark would clearly be distinguishable by consumers, and the terms appended that follow, “befits”, an intentional misspelling of “benefits”, and “center”, do not prevent a finding of confusing similarity under the Policy. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The disputed domain name, therefore, is confusingly similar to Complainant’s registered SODEXO Mark (and its <SODEXO.com> domain name used to access the Official Website through which Complainant offers its employment-related services).

Complainant also contends “the risk of confusion or association with the mark SODEXO is stronger as the mark SODEXO is precisely used by the Complainant for benefits and rewards services”. This Panel finds the combination of the Complainant’s mark followed by terms describing its services in the disputed domain name should be given some weight to establishing confusing similarity but more importantly to the intentional targeting of Complainant’s mark through this combination of terms, which is more appropriately considered under elements two and three of the Policy.

Complainant’s SODEXO Mark is recognizable as incorporated in its entirety into the disputed domain name. The Panel finds, therefore, the disputed domain name confusingly similar to the SODEXO Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation, association, sponsorship, or connection with Complainant. Complainant also asserts that Respondent has not been authorized, licensed, or otherwise permitted by Complainant or by any subsidiary or affiliated company to make use of the SODEXO Mark in any manner, including the registration of the disputed domain name (much less the registration of a domain name to access a website structured to possibly engage in an illegitimate TechScam scheme against Complainant’s customers or prospective customers). Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.

Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Domain Administrator, Fundacion Privacy Services LTD, Panama” of Panama. The Registrar disclosed no other registrant or registrant organization associated with the disputed domain name. Respondent bears no resemblance to the disputed domain name whatsoever. These facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its […] marks, it is unlikely that the Respondents are commonly known by any of these marks”).

A respondent not commonly known by the disputed domain name supports a finding of a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No.. D2004-1049.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Complainant also contends and has provided detailed evidence showing the potential for Respondent’s use of the disputed domain name to point unsuspecting users to a malicious website using the SODEXO Mark as part of a TechScam site to deliver malware, spyware, or a virus to a user’s computer. Complainant asserts and shows in a screenshot incorporated into its Complaint, that Respondent’s domain name accesses a website with a mock Windows warning in French (the language where Complainant is based) which appears to be an official Windows support notice, with a technical support phone number the user is instructed to call to prevent their computer from being disabled. Complainant contends that the operator at the technical support number requests the user accessing the site to download software allowing the operator to gain remote access to the user’s computer, as well as provide a code to the user which once inserted is likely to infect the computer or to install malware or spyware on it. Based on the limited evidence presented and cases involving similar schemes to spread malware and viruses, the Panel finds it is reasonable to infer that Respondent’s use of the disputed domain name to create a risk of implied affiliation with Complainant combined with a fraudulent windows warning of imminent lockup danger to a user’s computer to trap the user into calling the warning’s fraudulent technical support help line (a scheme sometimes referred to as “mousetrapping”), represents the type of malicious, illegitimate and bad faith use incapable of meeting the requirements of the second criterion of the Policy. See e.g., Twitter, Inc. v. Domain Admin, Whois Protection / Accueil des Solutions, Inc, WIPO Case No. D2014-0645; Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; and 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043.

Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.

Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel has found in Section 6.A. above that the disputed domain name is confusingly similar and nearly identical to Complainant’s SODEXO Mark and is so closely associated with Complainant and its services to carry a risk of implied affiliation.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s SODEXO Mark, it is implausible to believe that Respondent was not aware of Complainant’s widely-known SODEXO Mark when it registered its confusingly similar domain name. This is especially true where Complainant’s SODEXO Mark has been used for over a dozen years (and in a slightly different form SODEXHO since 1966) and is registered all over the world, including in the nation where Respondent is located. 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 widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.; see also, SODEXO v. Shahzan / PrivacyProtect.org, WIPO Case No. D2013-1308.

The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration:

(i) Registration of a domain name incorporating a widely-recognized or well-known trademark by Respondent who has no connection whatsoever with the SODEXO Mark;

(ii) Complainant’s SODEXO Mark is well known, distinctive, recognized as a leader in its industry in France and worldwide and in use for over 12 years before the disputed domain name was registered;

(iii) Respondent’s deletion of the letters “ne” from the word “benefits”, is a “typo” in reference to Complainant’s employee benefits services to confuse consumers searching for Complainant, and thereby evidences typosquatting; and

(iv) Respondent’s registration of the disputed domain name using a malicious malware site with a confusingly similar domain name to imply an affiliation with Complainant, it is inconceivable that Respondent could have registered the disputed domain name without Complainant’s marks in mind and with any bona fide intentions, but instead intending to engage in per se illegitimate activity for commercial gain to foist a TechScam site on Complainant and its customers.

Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.

Bad faith use is also clear from Respondent’s illegitimate conduct as discussed in detail in section 6.B. above, configuring the disputed domain name to link to a malicious website used for trapping consumers searching for Complainant’s services through a fraudulent popup Windows warning, directing trapped users to a help line used to spread viruses or malware and engage in a TechScam scheme harming unsuspecting consumers for Respondent’s commercial gain. See, Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC, WIPO Case No. D2018-2510. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration and use. See, WIPO Overview 3.0, section 3.3. See also Royal Bank of Canada v. China Capital Investment Limited, WIPO Case No. D2017-1025.

For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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, <sodexobefitscenter.com>, be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: October 5, 2021