WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Super Privacy Service LTD c/o Dynadot / Wu Yu
Case No. D2021-4215
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 (“United States”) / Wu Yu, China.
2. The Domain Name and Registrar
The disputed domain name <ecopasssodexotaxi.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 December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 December 16, 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 December 21, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022.
The Center appointed Theda König Horowicz as the sole panelist in this matter on February 2, 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 was founded in 1966 in France and specializes in food services and facility management; it is active in many countries. The Complainant provides a wide range of services through an offer of on-site services, benefit and reward services as well as personal and home services, which includes taxi vouchers commercialized under the denomination “Eco Pass”.
Until 2008, it was using the tradename and trademark SODEXHO and after a rebranding in 2008, it started using SODEXO with a new logo.
The Complainant has registered the trademark SODEXHO and later, as of 2007, the trademark SODEXO in many countries including France, China, and the United States of America (“United States”). Since 2004, it also owns a trademark registration for SODEXHO PASS + logo in Russia. The Complainant additionally holds a wide range of domain names including <sodexo.com> and <sodexo.fr>.
The disputed domain name was registered on October 7, 2021. It was used for a parking page providing links to websites for gift vouchers and gifts. The disputed domain name is also presented as being for sale for a minimum price of USD 299.
5. Parties’ Contentions
The Complainant alleges to be the owner of trademark rights in SODEXHO and SODEXO in many countries. It also own domain names including the mark SODEXO. The Complainant states that the said marks have a strong reputation and are widely known all over the world. The well-known character of SODEXO has notably been recognized in URDP decisions rendered by prior panels. The disputed domain name is composed of the mark SODEXO and the sign “Eco Pass Taxi”. The sign “Eco Pass Taxi” refers to Complainant’s activity relating to taxi vouchers. The sign SODEXO is predominant in the disputed domain name. The additional sign is not sufficient to avoid a risk of confusion; to the contrary, the Complainant estimates that the risk of confusion is higher since the SODEXO mark is used by the Complainant for vouchers under the ECO PASS sign.
The Complainant indicates that the Respondent has no rights or legitimate interests in the disputed domain name, notably because he has no rights in the SODEXO trademark. Furthermore, the Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to use its SODEXO trademark.
The Complainant is of the opinion that the disputed was registered and is being used in bad faith, in particular due to the well-known character of the SODEXO and SODEXHO trademarks. The Respondent could not ignore the latter when he registered the disputed domain name. By associating the well-known trademark SODEXO with the element “pass”, the Respondent was seeking to create a confusion with the Complainant. Additionally, the disputed domain name is pointing to a page indicating, in French language, that it is for sale for a minimum price of USD 299. The disputed domain name refers to a webpage which contains links to pay-per-click websites and redirects Internet users to websites of competitors of the Complainant. The Respondent is also known for being involved in several other UDRP proceedings and for unduly registering domain names comprising trademarks owned by third parties which is a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant showed to have trademark rights in SODEXO through trademark registrations worldwide, including France, the United States, and China.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side 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. In 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.
The disputed domain names contain the SODEXO trademark in its entirety. The addition of the terms “eco pass” at the beginning of the disputed domain name and “taxi” at the end of it does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain names.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “sodexo” or that a legitimate business would be run by the Respondent under the disputed domain name.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file; which would show that the disputed domain name has been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain names. Furthermore, the nature of the disputed domain names, incorporating the Complainant’s well-known trademark and descriptive terms associated with the Complainant’s taxi vouchers services, carries a risk of implied affiliation (see section 2.5.1, WIPO Overview 3.0).
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown that its SODEXO and SODEXHO trademarks have been registered and widely used for several years before the registration of the disputed domain names in 2021.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain names (see section 3.2.2, WIPO Overview 3.0). This finding is reinforced given the construction of the disputed domain name, namely the addition of the affiliated term “eco pass” to the Complainant’s trademark, term which is also used by the Complainant in its business.
The disputed domain name resolves to a landing webpage where it is mentioned that the disputed domain name is for sale, which is an indication that the Respondent passively holds the disputed domain name aiming at a potential commercial gain.
Furthermore, the Complainant has shown that the disputed domain name resolves to parking pages which provide links to some of its competitors which is also an indication of bad faith use.
The Panel further notes that the Respondent has chosen not to respond, which is another indication of bad faith in the present circumstances, along with the use of a privacy service to mask its details.
Finally, the Respondent is known for having registered many domain names unduly containing famous brands (cybersquatting) which is a typical indication of bad faith as well. See, e.g., Compagnie Générale des Etablissements Michelin v. Super Privacy Service LTD c/o Dynadot / Wu Yu, WIPO Case No. D2021-2191.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) 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, <ecopasssodexotaxi.com> be transferred to the Complainant.
Theda König Horowicz
Date: February 22, 2022