WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / John Travol
Case No. D2021-2580
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
2. The Domain Name and Registrar
The disputed domain name <us-sodexo.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 August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 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 August 11, 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 16, 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 August 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 25, 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 foodservices and facilities management company based in France. It employs hundreds of thousands of employees around the world and serves tens of millions of customers globally.
The Complainant offered services under the SODEXHO trade mark for over 50 years and has offered services under the SODEXO trade mark (the “Mark”) since 2008. It is the owner of a number of trade mark registrations for or incorporating the Mark around the world, including:
- European Union Trade mark registration number 006104657, filed on July 16, 2007 and registered on June 27, 2008;
- European Union Trade mark registration number 008346462, filed on June 8, 2009 and registered on February 1, 2010; and
- United States Trade Mark registration number 3722463, registered on December 8, 2009.
The disputed domain name was registered on June 17, 2021. It is currently inactive and does not point to any active website but there is evidence before the Panel that it is being used by the Respondent to send emails to customers of the Complainant, which emails contain requests that those customers send payments due to the Complainant to alternative bank accounts controlled by the Respondent.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world, including those noted in section 4 above, and its longstanding use of the Mark under both its current (SODEXO) and former (SODEXHO) spellings. UDRP panels have all recognized the Complainant’s ownership, and the strength, of the Mark, which is fanciful and has no meaning independent of the Complainant. The Complainant contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of only the descriptive term “us”, which will be understood to refer to the United States, where the Complaint has substantial operations, together with a hyphen before the Mark, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges, with evidence, that the Respondent has been using the disputed domain name to perpetrate a fraud, writing to customers of the Complainant while imitating the Complainant in order to persuade those customers to send payments due to the Complainant to a bank account nominated by the Respondent but unrelated in any way to the Complainant.
The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. It notes that the Respondent has used a privacy service to conceal its identity.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, and therefore registered it, and is using it, in bad faith. The Mark, according to the Complainant, is well-known throughout the world. The Respondent’s own use of email addresses connected to the disputed domain name for email scams intended to extract payments from companies, and further references the Complainant’s website in the footer of the fraudulent emails, further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
The Complainant believes, seemingly as a result of investigations into the disputed domain name by a party defrauded by the Respondent, that the Respondent’s name is “James White”. It notes that a party with that name has been found in at least three previous UDRP Complaints to have registered and used in bad faith for the purpose of email scams, domain names in the format <us-[trademark].com> (Konecranes, Inc. v. James White, WIPO Case No. D2018-0861 (<us-konecranes.com>), Moog, Inc. v. James White, WIPO Case No. D2018-0886 (<us-moog.com>) and Jungheinrich AG v. James White, WIPO Case No. D2018-1562 (<us-jungheinrich.com>).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “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 therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the term “us”, which will be perceived to be a geographical term referring to the United States, where the Complainant undertakes commercial activities, and the use of a hyphen in the disputed domain name does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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 the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but is distinctive of the Complainant: previous UDRP Panels have reached that conclusion and there is no basis for this Panel to reach a different conclusion in this Complaint. That makes a coincidental adoption by the Respondent highly unlikely.
The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
Furthermore, and most importantly, the use of the disputed domain name to send emails seeking the redirection and appropriation of funds properly destined for the Complainant does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here.
It should be noted, for completeness, that the name of the registrant of the disputed domain name currently appearing on the WhoIs is not “James White” but “John Travol”. It is possible that the investigation which gave the Complainant the name “James White” was based on out-of-date information, or that the Respondent has simply changed the name on the WhoIs and one or both of them are false. Whatever the cause of these differences, the similarities between this Complaint and the three earlier UDRP decisions cited in section 5A above are undeniable.
Notwithstanding all of this, the Panel has not relied on the existence of the three earlier UDPR decisions cited above to reach a decision in this Complaint. Whether or not the Respondent is called “James White” (or even “John Travol”), and whether or not the Respondent was the same respondent in any of those three earlier decisions, does not affect the Panel’s conclusions in this Complaint.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element, although it is doubtful that the Respondent could have said anything to justify the use of the disputed domain name as set out above.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds 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 notes that the Mark has already been found by previous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or generic term.
The Panel also notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. This finding is reinforced given the Respondent’s use of the disputed domain name for purposes of a fraudulent email scheme targeting the Complainant’s customers.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith, in that the disputed domain name is being used to send emails seeking the redirection and appropriation of funds properly destined to the Complainant. This is not an acceptable use of the Complainant’s trade marks and section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”.
The Panel notes that the Respondent has used the disputed domain name as a means of communication in a manner that will inevitably, and is intended to, confuse recipients of such communications as to their origin. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. In light of the totality of the evidence, there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name 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 <us-sodexo.com> be transferred to the Complainant.
Date: November 8, 2021
1 The Complaint alleges that the Respondent is actually “James White”, evidenced by an internal investigation annexed to the Complaint. The Panel has raised and addressed this matter in sections 5 and 6B below.