WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf/ Name Redacted 1
Case No. D2021-2753
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 Redacted.
2. The Domain Name and Registrar
The disputed domain name <sodexo-fr.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 August 23, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 27, 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 September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 1, 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 the French company SODEXO, one of the largest company in the world specialized in foodservices and facilities management.
The Complainant communicates directly to its customers via its website “www.sodexo.com”.
The Complainant is the owner of several national, international and European trademark registrations SODEXO, among which:
- French registration SODEXO n° 073513766 registered on July 16, 2007, renewed in 2017, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- International trademark registration SODEXO n° 964615 filed on January 8, 2008, under priority of the French trademark registration n° 07 3 513 766 of July 16, 2007, renewed in 2018, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in the following countries: Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Switzerland, China, Algeria, Egypt, European Union, Iran (Islamic Republic of), Iceland, Israel, Japan, Kyrgyzstan, Democratic People’s Republic of Korea, Republic of Korea, Kazakhstan, Lesotho, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, Republic of Namibia, Norway, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America, Uzbekistan and Viet Nam.
- International trademark registration SODEXO n° 1240316 filed on October 23, 2014, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in the following countries: Iran (Islamic Republic of), Mozambique and United Kingdom.
The Respondent registered the disputed domain name <sodexo-fr.com> on July 4, 2021.
According to the Complainant, the disputed domain name was used as a parking page displaying pay-per-click (“PPC”) links connecting to the Complainant’s competitors websites for CESU (vouchers and cards services for personal & home services), prepaid cards and meal vouchers.
The disputed domain name does not resolve to an active website at the time of the present decision.
5. Parties’ Contentions
First, the Complainant claims that the disputed domain name <sodexo-fr.com> incorporates the Complainant’s trademark SODEXO in its entirety with the addition of the suffix “-fr” and the generic Top-Level Domain “.com”.
Previous UDRP panels have considered the SODEXO trademark to be “well-known”.
The letters “fr” are obviously understood as the geographical abbreviation for France. This minor difference does not distinguish the disputed domain name from the Complainant’s SODEXO trademark.
Then, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name <sodexo-fr.com>.
This disputed domain name has been registered in the name of an employee of the Complainant and the Complainant claims that she did not register the disputed domain name.
According to the Complainant, this is an identity theft: the disputed domain name has not been registered by SODEXO; the Respondent used the Complainant name SODEXO fraudulently.
The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name and trademark SODEXO.
The Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized or licensed to use the trademark SODEXO.
Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
Due to the well-known character and reputation of the SODEXO / SODEXHO mark, the Respondent most likely knew its existence when it registered the disputed domain name and knew that it had no rights or legitimate interests in the disputed domain name.
Moreover, identity theft is evidence of bad faith, per se.
The word SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.
The Respondent is using the disputed domain name by exploiting the confusion with the well-known mark SODEXO / SODEXHO to attract Internet users and to incite them to click on third-party commercial links. This is then an intentional attempt to attract, for commercial gain, Internet users to the Complainant’s competitors’ websites by creating a likelihood of confusion with the well-known trademark SODEXO.
As a consequence, the Complainant requests that the disputed domain name be transferred.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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 has been registered and is being used in bad faith.
However, under paragraph 14(b) 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”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns numerous trademark rights on the name SODEXO. This trademark is fully reproduced in the disputed domain name <sodexo-fr.com>.
The addition of the suffix “-fr” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name <sodexo-fr.com> is confusingly similar to a service mark in which the Complainant has rights.
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 domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has satisfied its burden of proof here: the Complainant has argued that it does not know the Respondent, is not connected to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. On the contrary, the operation by the Respondent of a phishing scheme demonstrates a lack of rights or legitimate interests.
Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well-known trademark with the mere addition of “-fr”, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of WIPO Overview 3.0. See also Caspari, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Domain Admin, WIPO Case No. D2021-1650.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered, or you have 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 documented out-of-pocket costs directly related to the domain name; or
(ii) you 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 have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.
Bad faith is obvious in the present case:
First, the Respondent has registered the disputed domain name using the identity of an employee of SODEXO company.
Second, considering that the Complainant has established goodwill and reputation on the SODEXO trademark and that the disputed domain name incorporates that trademark in its entirety, the Respondent had necessarily the Complainant’s trademark in mind when it registered the disputed domain name. Moreover, the Complainant submitted printouts showing that the website operated under the disputed domain name use to display PPC links to sites offering competing services to the Complainant’s services. See section 2.9 and 3.5 of the WIPO Overview 3.0.
It appears therefore that the Respondent, by making reference to the SODEXO trademark, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to websites on which third parties, including the Complainant’s competitors are promoting their own competitive services.
The Panel finds that the Respondent’s use of the disputed domain name cannot therefore constitute use of the disputed domain name in the bona fide offering of goods or services.
Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 <sodexo-fr.com> be transferred to the Complainant.
Date: October 12, 2021
1 The Respondent appears to have used the name of a third party, an 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.