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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Registration Private, Domains By Proxy, LLC / Brett Scherschligt

Case No. D2021-2773

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“US”) / Brett Scherschligt, US.

2. The Domain Names and Registrar

The disputed domain names <hq-us-sodexo.com> and <sodexoseniorliving.com> are 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 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 August 31, 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2021.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 6, 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 French limited company which was founded in 1966. It is one of the largest companies in the world, specialized in food services and facilities management. It has over 420,000 employees, serving 100 million consumers in 64 countries. It is one of the largest employers in the world.

For the fiscal year 2020, its consolidated revenues reached 19.3 billion euros with 43% from North America, 40% from Europe and 17% from the rest of the world. This can be seen from its Integrated Report for fiscal year 2020 exhibited as Annex 4 to the Complaint and a presentation document exhibited as Annex 5.

From 1966 to 2008, it promoted its business under the mark SODEXHO but in 2008 simplified the spelling of its trading name to SODEXO and changed its trading logo to incorporate SODEXO rather than SODEXHO.

It can be seen from its trading website “www.sodexo.com/home/services.html” that the mark SODEXO is used in connection with the following trading activities; on-site services, benefits and rewards services, personal and home services. It is widely established in the US.

The marks SODEXHO / SODEXO mark are continuously and extensively used and protected in 64 countries. It has a strong reputation and is widely known all over the world.

At Annexes 6 to 13 to the Complaint the Complainant exhibits copies of its trade mark registrations together with at Annexes 14 and 15 a list of its registrations worldwide. In particular it relies upon the following registrations;

SODEXO plus logo International registration 964615 registered on January 8, 2008 (renewed in 2018) in international classes; 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in inter alia the European Union and US.

SODEXO International registration 1240316 registered on October 23, 2014 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in Iran (Islamic Republic of), Mozambique and United Kingdom.

SODEXHO plus logo International registration 689106 registered on January 28, 1998 (renewed in 2018) in international classes 16, 36, 37, 39, 41 and 42 protected in inter alia China, Germany, United Kingdom, Japan, Korea (Republic of), and Russian Federation.

SODEXO European Union registration 008346462 registered on February 1, 2010 in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

SODEXO plus logo European Union registration 006104657 registered on June 27, 2008 (renewed in 2017) in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

SODEXO QUALITY OF LIFE SERVICES plus logo International registration 1195702 registered on October 10, 2013 in international classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45 protected in Australia, China and US.

SODEXO QUALITY OF LIFE SERVICES plus logo European Union registration 011138501 registered on January 22, 2013 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

The Complainant also owns numerous domain names containing SODEXO or SODEXHO including, for example; <us.sodexo.com>, <sodexo.com>, <sodexousa.com>, <uk.sodexo.com>,<sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <cn.sodexo.com>, <sodexho.fr> and <sodexho.com>.

The Complainant refers to a significant number of recent previous panel decisions in which it was successful and in which those panels have found, inter alia, that the mark SODEXO has a reputation and is well-known. By way of example the panel decision in Sodexo v. Registration Private, Domains By Proxy,LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580 where that Panel found; “that the Complainant’s business is truly international and of such a size and scope that it has developed a very substantial reputation as has been recognized by previous UDRP panels”.

The disputed domain names were both registered on July 20, 2021, which is a date after the dates of registration of the trade marks referred to above. The disputed domain names resolve to inactive pages.

In the absence of a Response the Panel finds the evidence adduced by the Complainant and set out above to be true.

5. Parties’ Contentions

A. Complainant

The Complainant submits:

i. It owns registered trade mark rights in the mark SODEXO and the disputed domain names <hq-us-sodexo.com> and <sodexoseniorliving.com> are confusingly similar to the mark SODEXO;

ii. On the evidence, the Respondent has no rights or legitimate interests in respect of the two disputed domain names;

iii. On the evidence, the two disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

As set out in section 4 above the Panel has found that the Complainant owns registered rights worldwide for the mark SODEXO and that these all predate the date of registration of the two disputed domain names which were both registered on July 20, 2021.

i. <hq-us-sodexo.com>

This consists of the mark SODEXO in its entirety with the addition of the prefix “us-” and the element “hq-”.

The Complainant submits that these would be understood as abbreviations for “United States” and “headquarters”. The Panel agrees with that and finds that the addition of the terms “us-” and “hq-” 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”).

The Panel therefore finds that the disputed domain name <hq-us-sodexo> is confusingly similar to the mark SODEXO in which the Complainant has rights within paragraph 4(a)(i) of the Policy.

ii. <sodexoseniorliving.com>

This consists of the mark SODEXO together with the words or expression “senior living”. The Panel finds that the addition of “senior living” does not prevent the Complainant’s trademark from being recognizable in the disputed domain name. See section 1.8 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain name <sodexoseniorliving.com> is confusingly similar to the mark SODEXO in which the Complainant has rights within paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that there is no evidence that the Respondent has any rights or legitimate interests in the two disputed domain names based upon the fact that the Respondent has no rights in SODEXO as a corporate name, trade name shop sign, mark or domain name existing prior to the acquisition of the Complainant’s rights in the mark SODEXO.

In particular, there is no evidence that the Respondent was commonly known by the domain names prior to the adoption and use by the Complainant of SODEXO.

Moreover there is no evidence of the Respondent having any affiliation, association, sponsorship or connection with the Complainant. The Respondent has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain names.

In the absence of a Response the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the two disputed domain names within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant refers to paragraph 4(b) of the Policy and the list of circumstances indicating bad faith. It submits that the following supports a finding of registration and use in bad faith;

i. The fact that the mark SODEXO is “purely fanciful” so that nobody could legitimately choose this word or any variation thereof unless they sought to create an association with the Complainant’s activities and its marks SODEXO.

ii. Due to the well-known character and reputation of the mark SODEXO the Respondent knew of its existence when he registered the two disputed domain names so that he knew that he had no rights or legitimate interests in the disputed domain names at the date of registration.

The Complainant relies upon previous decisions which recognize that actual knowledge of the Complainant’s marks and activities at the time of registration may infer bad faith. An example cited by the Complainant is LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, which was followed in later decisions, where the Panel found; “It has been held in previous cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith”. This Panel finds that this is the position in this case.

iii. It is “obvious” that the Respondent registered the two disputed domain names with actual knowledge of the Complainant’s rights “very likely for the purpose of creating confusion with the Complainant’s mark to divert or mislead third parties for Respondent’s illegitimate profit.”

iv. The Panel should take into account;

a. the strong reputation and well-known character of the Complainant’s mark;

b. the lack of any evidence of good faith use by the Respondent with regard to the disputed domain names;

c. the comparison of the disputed domain names with the Complainant’s name and mark show that he intended to divert or mislead potential web users from the Complainant’s website.

The Panel particularly takes note of the fact that the disputed domain name <sodexseniorliving.com> contains a reference to the Complainant’s provision of senior living facilities and that “senior living” is a term referred to in the Complainant’s website.

In the absence of a Response the Panel finds on the Complainant’s evidence;

i. The Respondent registered the disputed domain names so as to create an association with the Complainant;

ii. The Respondent knew of the existence of the Complainant and its mark SODEXO at the date of registration of the disputed domain names;

iii. The choice of the term “senior living” by the Respondent in one of the disputed domain names shows the Respondent registered and is using the disputed domain names to divert web users from the Complainant’s web site so as to create a likelihood of confusion within Paragraph 4(b)(iv) of the Policy.

Moreover the Complainant refers to the fact that it provides senior living services. Evidence of this is set out in the Complaint consisting of extracts from its website “www.sodexo.com/home/you-industry/seniors.html”. This demonstrates a strong risk of confusion or association with the mark SODEXO and the Complainant’s activity in this field.

iv. The disputed domain names resolve to inactive pages. The Panel finds that passive holding of the disputed domain names, which incorporate a distinctive trademark, without a legitimate purpose does not prevent a finding that the disputed domains name are being used in bad faith under paragraph 4(a)(iii) of the Policy.

It follows that the Complainant has established that the two disputed domain names were registered and are being used in bad faith within 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 names, <hq-us-sodexo.com> and <sodexoseniorliving.com>, be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: October 19, 2021

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