WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Name Redacted
Case No. D2021-2041
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Name Redacted1, France.
2. The Domain Name and Registrar
The disputed domain name <b2b-sodexo.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 June 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 30, 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 July 2, 2021. The Complainant filed a second amended Complaint on July 5, 2021. The Complainant submitted a supplemental filing on July 19, 2021.
The Center verified that the Complaint together with amended Complaints 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 20, 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 world leader in the field of foodstuff services and facilities management. In 2019, it employed 470,000 people worldwide – with a presence in 67 countries - and generated EUR 22 billion in consolidated revenues.
Since its incorporation in 1966, and until 2008, it identified itself in its business under the brand SODEXHO. Since 2008, in order to simplify the spelling of its brand, it evolved to SODEXO.
SODEXO is used as a trade mark, mostly to deliver on-site foodstuff services, but also benefit & reward services, and also personal and home services. As recognized in many decisions of the Center, this trade mark is very well-know, particularly in France. See in particular 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, Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman, WIPO Case No. D2020-1281, Sodexo v. Registration Private, Domains By Proxy, LLC / Krissa Pucket, WIPO Case No. D2020-1315, and Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580.
As a basis for this Complaint, the Complainant relies in particular on the European Union Trade Mark SODEXO (word) No. 8346462, filed on June 8, 2009, and registered on February 1, 2010.
In support of its activities, the Complainant also owns and uses a vast portfolio of domain names, including the domain name <sodexo.com>.
The disputed domain name was registered on May 17, 2021. The identity of the Respondent was disclosed by the Registrar in the course of this UDRP proceeding. However, the name and address provided for when registering the disputed domain name correspond to a former employee of the Complainant and, according to the available record, the identity of this former employee was usurped by the real registrant.
The disputed domain name was used in particular to create an email address and to exchange emails with potential suppliers of the Complainant. At least one phishing email was transferred to the Complainant and filed as evidence in this proceeding. This email was sent in July 2021 to a potential supplier of the Complainant: it bore the company name and the address of the Complainant, and was allegedly signed by its former employee, which identity was usurped, acting as “sales director”.
Besides, the disputed domain name is used in connection with a pay-per-click scheme, with links provide access to direct competitors of the Complainant, for example in the field of food vouchers.
5. Parties’ Contentions
The arguments put forward by the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant indicates that “The element B2B in the domain name b2b-sodexo.com means BUSINESS TO BUSINESS and is obviously perceived as such by the public”. Therefore, “Due to the identical reproduction of the mark SODEXO, the public will believe that the domain name b2b-sodexo.com comes from the SODEXO group or is linked to SODEXO in so far as SODEXO provides many B2B services”.
On the second element of the Policy, the Complainant argues on the one side that the Respondent has no rights over the disputed domain name, and has not been in relationship with it. Instead, the Respondent has provided as contact detail the name of a former employee of the Complainant, and an address which corresponds to that of the Complainant. On the other side, it claims that the Respondent has no legitimate interests in the disputed domain name: the Respondent only uses it to create a likelihood of confusion with the Complainant’s own activities.
On the third element of the Policy, the Complainant indicates that the Respondent had prior knowledge of the Complainant and its trade mark SODEXO, and configured the disputed domain name in bad faith. It adds that “The Respondent is using the domain name b2b-sodexo.com by exploiting the confusion with the well-known mark SODEXO / SODEXHO to attract Internet users and to incite them to click on third commercial links”. Finally, the concealment of its identity, and instead the impersonation of the identity of a former employee, are also an indicium of the bad faith of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the 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, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trade mark SODEXO.
The disputed domain name includes the Complainant’s trade mark in its entirety, combined with the term “b2b”, which refers to the concept of business to business services. The addition of the term “b2b” does not prevent the Complainant’s trademark from being recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trade mark 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.”
As the disputed domain name includes the Complainant’s trade mark in its entirety combined with a term that does not prevent the Complainant’s trademark from being recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. Therefore, the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. What is more, the use of the disputed domain name in connection with a fraudulent phishing scheme does not qualify as fair use.
Accordingly and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the 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 complainant from reflecting the complainant’s trade mark or service 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.
In this case bad faith is everywhere:
First, the finding of bad faith registration results from the very configuration of the disputed domain name which reproduces entirely the inherently distinctive and well-known trade mark SODEXO of the Complainant. The addition of the term “b2b” simply reinforces the connection with the Complainant’s activities, which are mainly aimed at businesses. This is precisely what the Respondent targeted when registering the disputed domain name. See WIPO Overview 3.0, section 3.2.1., “Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion) (…)”.
What is more, this Respondent impersonated the identity of a former employee of the Complainant when registering the disputed domain name, and also used the corporate address of the Complainant.
The finding of bad faith use results from the operation of a fraudulent phishing scheme, through the creation and operation of an email which impersonated the identity of a former employee of the Complainant, as well as its company name and corporate address. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4.
Likewise, the operation of pay-per-click links which direct users to competitors of the Complainant also characterizes the bad faith of the Respondent. This is true even if the content of these links is generated automatically. See WIPO Overview 3.0, section 3.5.
Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.
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 <b2b-sodexo.com> be transferred to the Complainant.
Date: September 2, 2021
1 The Respondent appears to have used the name of a third party (a former employee of the Complainant) when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.