WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC / Jennifer Davis
Case No. D2021-2475
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domains By Proxy, LLC, United States of America / Jennifer Davis, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sodexhoeastzone.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 August 4, 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 August 9, 2021.
The Center verified that the Complaint together with 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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2021.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 10, 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.
The proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar.
4. Factual Background
The Complainant, which came into existence in 1966 under the name SODEXHO ALLIANCE, is one of the world’s largest providers of food services, catering services, facilities management services, and employee benefits services with a workforce of 420 000 people serving 100 million consumers in 64 countries.
From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, SODEXHO changed its mark and corporate name to SODEXO.
The Complainant owns multiple trademark registrations for SODEXHO, including:
- French trademark registration No. 1249935 issued on November 4, 1983, with respect to products and services comprised in international classes1 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41, 42, 43, and 45;
- French trademark registration No. 96654774 issued on December 10, 1996, with respect to products and services comprised in international classes 16, 29, 30, 31, 32, 33, 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45;
- International trademark registration2 No. 689106 issued on January 28, 1998 with respect to products and services comprised in international classes 16, 36, 37, 39, 41, and 42;
- International trademark registration No. 694302 issued on June 22, 1998 with respect to products comprised in international class 9;
The Complainant also owns numerous trademark registrations for SODEXO, including:
- International trademark registration No. 964615 issued on January 8, 2008, with respect to products and services comprised in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, taking effect in the United States of America3, among other countries;
- International trademark registration No. 1240316 issued on October 23, 2014, with respect to products and services comprised in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- European Union Trademark4 (EUTM) No. 006104657 registered as of June 27, 2008, with respect to products and services comprised in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- European Union Trademark (EUTM) No. 008346462 registered as of February 1, 2010, with respect to products and services comprised in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
All these trademark registrations are in full force and effect, having been timely renewed where necessary.
The disputed domain name was registered on June 23, 2021, and has not resolved to an active website since.
5. Parties’ Contentions
The Complainant contends as follows:
(i) The marks SODEXHO and SODEXO are widely known all over the world, as recognized in numerous UDRP decisions;
(ii) The disputed domain name is understood as referring to the Complainant’s activities or projects in Eastern Europe;
(iii) It is well established that the addition of descriptive terms such as “east” and “zone” to the disputed domain name is insufficient to overcome the confusing similarity between the Respondent’s domain name and the Complainant’s SODEXHO/SODEXO marks for the purposes of the Policy;
(iv) To the Complainant’s knowledge, the Respondent lacks rights or legitimate interests in the disputed domain name as he has no rights accruing from the use of “sodexho" (as corporate name, trade name, shop sign, mark or domain name) that are prior to the Complainant’s trademark rights over SODEXHO/SODEXO;
(v) The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of its SODEXHO/SODEXO marks;
(vi) The Respondent is not affiliated with the Complainant in any way nor has it been licensed by the Complainant to use the SODEXHO/SODEXO marks in the disputed domain name or otherwise;
(vii) As the sign “sodexho" is purely fanciful, nobody could legitimately choose it unless seeking to create an association with the Complainant’s activities and the SODEXHO/SODEXO marks;
(viii) Because the SODEXHO/SODEXO marks are well-known, the Respondent should have known of their existence at the time of registering the disputed domain name, which the Respondent cannot legally use;
(ix) Numerous UDRP Panels have established that a respondent’s knowledge of the complainant’s mark is strong inference of the Respondent’s bad faith in the context of the Policy;
(x) The Respondent not only had actual knowledge of the SODEXHO/SODEXO marks but also wants to benefit from their reputation;
(xi) Even if the disputed domain name, which has been recently created, does not presently have any active content, a passive holding of a disputed domain name does not prevent a finding of bad faith, taking into account the totality of the circumstance of this case, including the well-known character of the SODEXHO/SODEXO marks, the lack of evidence by the Respondent of any good faith use of the disputed domain name, and the actual or potential diversion of Internet users from the Complainant’s official websites;
(xii) Bad faith use also results from the threat of an abusive use of the disputed domain name by the Respondent;
(xiii) The unauthorized registration of the disputed domain name by the Respondent and its passive holding, are presumably for commercial gain and fraudulent purposes.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), elucidating that “the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
The Complainant owns French and international trademark registrations for SODEXHO, the earliest of which has been in force since November 4, 1983 (see section 4 supra).
The Complainant also owns international trademark registrations for SODEXO, the earliest of which has been in force since January 28, 1998 (see section 4 supra).
The Complainant submits that its SODEXHO mark is wholly reproduced in the disputed domain name, together with “east” and “zone”, which are dictionary terms incapable of dispelling the confusing similarity between the Respondent’s domain name and the Complainant’s SODEXHO/SODEXO marks.
Pursuant to section 1.8 of the WIPO Overview 3.0, where the relevant trademark 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 Panel clearly recognizes the Complainant’s SODEXHO mark within the disputed domain name as “Sodexho” is a term inherently distinctive that has no meaning other than as the trademark of the Complainant.
Moreover, the terms “east” and “zone” are primarily geographically descriptive, and therefore irrelevant for purposes of the instant comparison.
The Panel therefore finds that the disputed domain name is confusingly similar to the SODEXHO/SODEXO marks in which the Complainant has rights.
Ultimately, the Complainant has passed muster under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you [the respondent] of the dispute, your [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or
(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant asserts not having authorized the Respondent to incorporate any of the SODEXHO/SODEXO marks in the disputed domain name or use the said marks otherwise.
The Complainant also alleges that at the time of registration of the disputed domain name, the Respondent was not known by the name “sodexho" as it did not use it as a trademark, trade name, or otherwise.
The Panel regards the above assertions to be credible in light of the submissions and evidence on file, and in view of the worldwide reputation and goodwill attaching to the Complainant’s SODEXHO/SODEXO marks. At any rate, the Complainant’s assertions against the Respondent remain uncontested.
On top of that, it bears noting that the Respondent’s misappropriation of the Complainant’s SODEXHO/SODEXO marks, as found by this Panel in section 6.C infra, precludes the Respondent from claiming rights or legitimate interests in the disputed domain name as a matter of course. See section 2.15 of the WIPO Overview 3.0 (to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights).
In sum, the Panel determines that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of the Policy.
The Complainant has fulfilled the second limb of Policy, paragraph 4(a).
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
In the Policy’s context, bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.
The Complainant has demonstrated to own numerous trademark registrations for SODEXHO/SODEXO around the world, including in the United States where the Registrar confirmed that the Respondent is located (even if the address provided by the Respondent is false, as elaborated below).
The Panel notes that SODEXHO is a mark coined by the Complainant5. Thus, by registering the disputed domain name, the Respondent must be deemed to have misappropriated the Complainant’s SODEXHO/SODEXO marks, and have taken unfair advantage of said marks’ reputation and notoriety. See section 3.1.4 of the WIPO Overview 3.0 stating that “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark (particularly domain names comprising the famous or well-known mark plus a descriptive term) by an unaffiliated entity can by itself create a presumption of bad faith”.
It is well settled that a domain name which resolves to an inactive website is no obstacle to the Panel’s finding bad faith use of the disputed domain name for purposes of the third limb of Policy paragraph 4(a)(iii) by looking at the totality of the circumstances of the case. See section 3.3 of the WIPO Overview 3.0 which states that “from the inception of the UDRP, panelists have found that the non-use of a domain name, including a blank or “coming soon” page, would not prevent a finding of bad faith under the doctrine of passive holding”.
Factors that have been considered relevant in applying the passive holding doctrine include:
the degree of distinctiveness or reputation of the complainant’s mark;
the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
the implausibility of any good faith use to which the domain name may be put.
All these factors are proven by the Complainant, or inferred from the record in the instant case.
First, the Complainant’s SODEXHO/SODEXO marks are well known internationally. See Sodexo v. Julien Jimenez, WIPO Case No. D2021-1414 (“The SODEXHO/SODEXO marks have a strong and worldwide reputation”).
Second, the Respondent failed to assert factual and legal defenses against the Complainant’s contentions.
Third, the Respondent used a privacy service and presumably provided false contact information, as shown in the DHL report of August 16, 2021, on file, informing that it was not possible to deliver the shipment (containing the Written Notice of the Commencement of Administrative Proceeding) to the Respondent, due to a “bad address”.
Fourth and last, the selection of the terms forming the disputed domain name, its lack of use in a corresponding website, and the Respondent’s failure to appear in this proceeding give no basis to the Panel to believe that the disputed domain name might conceivably be put to good faith use without violating the Policy and the Complainant’s exclusive rights over its SODEXHO/SODEXO marks.
For the reasons given, the Panel holds that the disputed domain name was registered in bad faith and has been used in bad faith.
The Complainant has discharged its burden in relation to 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 domain name <sodexhoeastzone.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: October 1, 2021
1 Established pursuant to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957).
2 Provided for in the Madrid Agreement Concerning the International Registration of Marks of 1891, and the Protocol Relating to the Madrid Agreement (1989), together “the Madrid system”.
3 Where the Respondent is located.
4 Formerly known as Community trademark (CTM), established by the Council Regulation (EC) No 40/94 of 20 December 1993 (repealed), which was codified in 2009 as Council Regulation (EC) No 207/2009 (amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015).
5 SODEXHO is the acronym of Société de Exploitation Hoteliere. See https://acronyms.thefreedictionary.com/SODEXHO