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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Super Privacy Service LTD c/o Dynadot / Wu Yu

Case No. D2021-3102

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <spdexobrs.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 September 22, 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 September 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on October 27, 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 company specializing in food services and facilities management, with its headquarters in Issy-les-Moulineaux, France. It was founded in 1966 and now has approximately 420,000 employees, serving 100 million customers in 64 countries.

The Complainant’s primary brand, SODEXO, is protected by numerous trade mark registrations in multiple countries. These include, by way of example only, European Union Trade Mark, registration number 008346462, registered in classes 9, 16, and 35 to 45 inclusive, on February 1, 2010. The Complainant also owns and operates many domain names which include the mark SODEXO, including <sodexo.com> and <sodexo.fr>.

The disputed domain name was registered on May 6, 2021. The Complainant has provided evidence that the disputed domain name resolves to a webpage at which it is offered for sale at a minimum price of USD 800. The page also contains a number of pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its trade marks for SODEXO, full details of one of these marks having been set out above, and says that the only differences between its mark and the disputed domain name are that the letter “p” (which is adjacent to the letter “o”, on QWERTY keyboards) has replaced the first “o” in SODEXO and the letters “brs” have been added after the mark. The term “brs” is an abbreviation for “Benefits and Reward Services”, which is an employee incentive program operated by the Complainant, and “Sodexo BRS” is also the name of one of the Complainant’s subsidiaries. These differences between the disputed domain name and the Complainant’s mark are insufficient to distinguish them and Internet users are therefore likely to believe that the disputed domain name is associated with the Complainant.

The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has no rights in SODEXO, whether as a corporate name, trade name, domain name or otherwise. The Respondent is not commonly known by the disputed domain name, nor does it have any affiliation, association or other connection with the Complainant, nor has it been authorized, licensed or otherwise permitted by it, or by any subsidiary or affiliated company, to register and use the disputed domain name.

The Complainant says, lastly, that the disputed domain name was registered and is being used in bad faith. Due to the widespread reputation of the Complainant’s mark, including in China where the Respondent is based, the Respondent most likely knew of its existence when it registered the disputed domain name and knew it had no rights or legitimate interests in it. The mark SODEXO is fanciful and nobody could choose this word to register, particularly when associated with the element “brs”, unless seeking to create an association with the Complainant. The disputed domain name resolves to a page at which it is offered for sale for a sum in excess of the Respondent’s documented out of pocket costs directly related to the disputed domain name. The PPC links on the Respondent’s webpage establish that it registered the disputed domain name with actual knowledge of the Complainant’s rights for the purpose of causing confusion with the Complainant’s mark to divert or mislead third parties for the Respondent’s illegitimate profit. Bad faith registration and use are established when a domain name resolves to parking pages which contain links based on the trade mark value of the complainant’s mark; see, for example, Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.

Lastly, the Respondent has been a respondent in several other proceedings under the Policy in which the domain names in issue were ordered to be transferred to the respective complainants.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided details of the registered trade marks it owns for SODEXO, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.

As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name includes the Complainant’s SODEXO mark in its entirety, save that the first “o” in the mark has been replaced by a “p”, these letters being adjacent to each other on a QWERTY computer keyboard. The letters “brs” follow the term “spdexo” in the disputed domain name. Neither the minor misspelling of the Complainant’s mark nor the additional letters “brs” prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 Complainant’s SODEXO mark is recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.

So far as the first of these circumstances is concerned, the inclusion of PPC links on a respondent’s website is considered at section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which explains that “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.

The fact that the links on the Respondent’s webpage have no obvious connection with the Complainant is insufficient for the Respondent’s activities to comprise a bona fide offering of goods and services because the Respondent has been using the repute of the Complainant’s mark and the confusing similarity to it of the disputed domain name in order to attract Internet users to its webpage, and thereby derive a commercial benefit from it, without the Complainant’s consent. The distinctive character and reputation of the Complainant’s SODEXO mark is such that any use of the disputed domain name by the Respondent capitalizes on the repute of the Complainant’s mark and cannot amount to use in connection with a bona fide offering of goods or services; see Georgetown Hospital System d/b/a Tidelands Health v. Zhichao Yang, WIPO Case No. D2018-1258. Nor does offering the disputed domain name for sale amount to a bona fide offering of goods and services; see, for example, Educational Testing Service v. John Krzysik, WIPO Case No. D2018-0931.

There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; such use as the Respondent has made of the disputed domain name is commercial in character, which prevents its use from being considered fair.

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests; see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore 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 fact that the disputed domain name comprises a typo-squat variation of the Complainant’s distinctive mark and couples it with the letters “brs”, which are apt to be associated with the Complainant’s Benefits and Rewards Services program, establishes, on at least a balance of probabilities, that the Respondent was aware of the Complainant and its SODEXO mark as at the date of registration of the disputed domain name. Moreover, the use to which the disputed domain name has been put following registration points to the Respondent having registered it in order profit unfairly from the connection which Internet users would make between the disputed domain name and the Complainant. As explained at section 3.1.4 of the WIPO Overview 3.0. “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. See also, by way of example; Bytedance Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Lawal Babatunde, WIPO Case No. DCO2020-0096. The Panel therefore finds the registration of the disputed domain name to have been in bad faith.

Whilst the use of a domain name to point to a parking page hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it resolves are intended to mislead Internet users. The fact that the links on the Respondent’s website do not have an obvious connection with the Complainant’s business does not, in these circumstances, prevent the Respondent’s use of the disputed domain name from being in bad faith. As explained by the panel in Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491; “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.

The Respondent’s conduct therefore falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

Paragraph 4(b)(ii) of the Policy sets out a further circumstance of bad faith registration and use, namely if a respondent has registered a domain name in order to prevent the trade mark owner from reflecting its mark in a corresponding domain name and the respondent has engaged in a pattern of such conduct. The Complainant has provided many instances of decisions of earlier UDRP panels which have found against the Respondent. Accordingly, bad faith registration and use by the Respondent is also established under paragraph 4(b)(ii) of the Policy.

Finally, the disputed domain name is advertised for sale at a price of USD 800. This sum will likely be well in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The only likely potential buyers are the Complainant or one of its competitors. The offering for sale of the disputed domain name therefore amounts to bad faith registration and use within the circumstance described at paragraph 4(b)(i) of the Policy; see Warners’ Stellian Company, Inc. v. Moniker Privacy Services and HK Domain Privacy, WIPO Case No. D2013-1886.

The Panel therefore finds, for the above reasons, that the disputed domain name was registered and is being used in bad faith.

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 name, <spdexobrs.com>, be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: November 11, 2021

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