WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Perfect Privacy, LLC / Randy Moore, Axion IT
Case No. D2021-3770
1. The Parties
The Complainant is Sodexo, France, represented by Aréopage, France.
The Respondent is Perfect Privacy, LLC, United States of America (“United States”) / Randy Moore, Axion IT, United States.
2. The Domain Name and Registrar
The disputed domain name <clubsodexho.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 17, 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 November 18, 2021.
On November 18, 2021 the Respondent sent an informal message to the Center.
The Center verified that the Complaint together with the amended Complaint satisfy 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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 26, 2022. 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 food services and facilities management company established in France in 1966.
Having used from 1966 to 2008 the trade name and trademark SODEXHO, it decided to adopt the simplified version of SODEXO in 2008, currently owing, amongst several others, the following trademark registrations Annexes 6 to 17 to the Amended Complaint):
- French trademark registration No. 1249935 for SODEXHO, registered on November 4, 1983 and subsequently renewed, in classes 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41, 42, 43 and 45;
- French trademark registration No. 96654774 for SODEXHO and device, registered on December 10, 1996 and subsequently renewed, in classes 16, 29, 30, 31, 32, 33, 35, 36, 37, 39, 40, 41, 42, 43, 44 and 45;
- International trademark registration No. 689106 for SODEXHO and device, registered on January 28, 1998, subsequently renewed, in classes 16, 36, 37, 39, 41 and 42; and
- International trademark registration No. 1240316 for SODEXO, registered on October 23, 2014, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
Prior UDRP panel decisions have recognized that the Complainant’s SODEXO trademark has acquired a substantial reputation and is well-known. See, e.g., Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580.
The disputed domain name was registered on October 4, 2021. Presently, no active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts to have operations in 64 countries around the world, providing a combination of services including on-site food, facilities management, benefits and rewards, and personal and home services, counting with over 420,000 employees and serving one hundred million consumers, having thus reached a strong reputation and become widely known all over the world.
Under the Complainant’s view the disputed domain name incorporates the Complainant’s SODEXHO trademark in its entirety, with the addition of the term “club”.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent has no rights on SODEXHO as a corporate name, trade name, trademark or domain name that would predate the Complainant’s rights over SODEXHO;
(ii) the Respondent is not commonly known by the disputed domain name; and
(iii) the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.
As to the registration and use of the disputed domain name in bad faith the Complainant states that the Complainant’s trademark is well-known and enjoys a great reputation, so that the Respondent was not able to ignore it when registering the disputed domain name and thus it being obvious that the Respondent is intentionally attempting to take advantage of the well-known character of the Complainant’s SODEXO/SODEXHO trademark in order to try to attract Internet users to the disputed domain name or to mislead third parties for an illegitimate profit. In addition to that the Complainant argues that the disputed domain name is being passively held by the Respondent, likely in the aim of fraudulent uses and for the purpose of commercial gain.
The Respondent did not formally reply to the Complainant’s contentions.
On November 18, 2021 the Respondent sent an informal message to the Center stating that “I am not the correct respondent for this complaint. I was the technical contact for this domain name before it expired. My business relationship with clubsodexho.com ended many years ago. I have no relationship with the current registrant for this domain name.”
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
The Respondent claimed it was not the ultimate owner of the disputed domain name. However, the Panel notes that the Registrar has confirmed the Respondent’s name and email address for the registrant of the disputed domain name. In addition, the Respondent did not provide any evidence to support its claim (for example about the extent, scope and termination of its “business relationship” with the disputed domain name), and no information is known about the beneficial holder or ultimate owner of the disputed domain name (if there is any). Therefore, the Panel finds Randy Moore, Axion IT as the Respondent in this proceeding.
A. Identical or Confusingly Similar
The Complainant has established rights over the SODEXHO trademark as well as over its simplified version SODEXO.
The disputed domain name reproduces the Complainant’s SODEXHO trademark in its entirety (and similarly its SODEXO trademark), the addition of the term “club” in the disputed domain name does not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”, as the Complainant’s trademark remains sufficiently recognizable in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.9).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and there is no connection or affiliation between the Complainant and the Respondent. Also, the Complainant indeed states it has not authorized, licensed or otherwise permitted the Respondent to register the disputed domain name and to use it.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible legitimate connection between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or from a webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests. In addition, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name is currently inactive. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom 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. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate noting the composition of the disputed domain name.
The choice to retain a privacy protection service to conceal the Respondent’s true identity further reinforces the indication of the Respondent’s bad faith in the broader context of this case.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <clubsodexho.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: February 9, 2022