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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. JH Kang

Case No. DCO2021-0048

1. The Parties

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

The Respondent is JH Kang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <sodexonet.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 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 June 7, 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 June 9, 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 June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2021.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on July 12, 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 was founded in 1966 and is a French company known as Sodexo (previously called Sodexho Alliance). The Complainant is one of the largest companies in the world specialized in food services and facilities management, with 420,000 employees serving 100 million consumers in 67 countries. The Complainant is one of the largest employers in the world.

For fiscal year 2020, consolidated revenues reached EUR 19,3 billion which represent by region: 43 per cent North America, 40 per cent Europe, 17 per cent Rest of World.

The company SODEXO is listed as one of “The world’s Most Admired Companies” by FORTUNE Magazine.

From 1966 to 2008, SODEXHO promoted its business under the SODEXHO mark and trade name. In 2008, SODEXHO simplified the spelling of its mark and name to SODEXO and changed its logo from SODEXHO (stylized) to SODEXO (stylized).

The mark SODEXO is used in connection with the following activities intended to improve the quality of daily life: on-site services, benefits and rewards services, personal and home services.

The mark SODEXHO / SODEXO is continuously and extensively used in 64 countries. The Complainant holds numerous domain names, including <sodexo.com> registered on October 8, 1998.

The Complainant holds a series of the SODEXHO / SODEXO trademark registrations, both word and stylized versions of the trademark, with global outreach, including the following trademark registrations which are the most relevant for this case:

- International Registration No. 964615, SODEXO (stylized), filed and registered on January 8, 2008 under priority of the French trademark registration No 07 3 513 766 of July 16, 2007, renewed in 2018, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. The international registration covers, inter alia, the Republic of Korea;

- Korean trademark registration No. 4607, SODEXHO (stylized), filed on December 20, 1999 and registered on January 20, 2002, renewed in 2012, in international classes 36 and 37 and Korean trademark registration No 1992, SODEXHO (stylized), filed on September 20, 1999 and registered on November 6, 2000, renewed in 2020, in international class 42;

- European trademark registration No. 008346462, SODEXO, filed on June 8, 2009, renewed in 2019, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.

The disputed domain name was registered on November 28, 2020. The Complainant has provided screenshots, taken on June 2, 2021, of pages resolving from the disputed domain name. These screenshots show that the disputed domain name resolved to a parking page in French an in English, apparently containing links to websites for workplace restaurants and meals vouchers that the Complainant says are operated by its competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name <sodexonet.co> is composed of the elements “Sodexo” and “net”. The expression “Sodexo net” may refer to Sodexo’s official website; (ii) the addition of the term “net” in the disputed domain name is obviously not sufficient to distinguish it from the Complainant’s trademarks; (iii) in the disputed domain name the element SODEXO keeps its individuality and is clearly perceived by consumers as the predominant part of the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has no rights to SODEXO as a corporate name, trade name, shop sign, trademark or domain name that are prior to the Complainant’s rights to SODEXO; (ii) the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and trademark SODEXO / SODEXHO; 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.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the mark SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant; (ii) the Respondent has the constructive knowledge of the Complainant trademark due to the well-known character and reputation of the trademark SODEXO / SODEXHO upon registration of the disputed domain name; (iii) the Respondent is using the disputed domain name by exploiting the confusion of it with the well-known trademark SODEXO / SODEXHO to attract Internet users and to incite them to click on third party commercial links; (v) it is recognized that bad faith registration and use occurs when a domain name is used to resolve to a parking page containing pay-per-click (“PPC”) sponsored links that are based on the trademark value of the domain name; (vi) the Respondent has already been involved in many UDRP cases which demonstrates that the Respondent demonstrates the pattern of abusive registrations.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the generic Top-Level Domain (“gTLD”) “.com” is ignored as the standard registration requirement as reflected in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the disputed domain name consists of the whole of the Complainant’s registered trademark SODEXO combined with the element “net”. The Complainant’s trademark SODEXO is clearly recognizable within the disputed domain name. The addition of the element “net” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark SODEXO in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SODEXO trademark. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a parking page with PPC links to third party websites for workplace restaurants and meals vouchers that the Complainant says are operated by its competitors.

Section 2.9 of the WIPO Overview 3.0 states that 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.
Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name.

Thus, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to scam the Complainant’s audience.

The Panel establishes that there are no evidences or statements of fact in the case which might evidence that the Respondent has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, has rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”.

According to section 3.1.1. of the WIPO Overview 3.0 the circumstances which may indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark include, alone or together: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.

The Panel establishes that the following factors indicate bad faith registration and use of the disputed domain name by the Respondent:

(i) due to the well-known character and reputation of the mark SODEXO, the Respondent most likely knew of its existence when he registered the disputed domain name which fully incorporates the Complainant’s trademark SODEXO;
(ii) the Complainant’s trademark is the coined word, and such trademarks inherently possess the high degree of distinctiveness. As distinctiveness may evolve, the longstanding and prominent global use of the SODEXO trademark by the Complainant just strengthened the distinctiveness of the mark;
(iii) the Complainant demonstrated that the Respondent has been already engaged in the conduct of abusive registrations evidenced by various previous UDRP proceedings;
(iv) the use of the disputed domain name for the parking page in French and in English, apparently containing links to websites for workplace restaurants and meals vouchers that the Complainant says are operated by its competitors to attract, for the commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

For the sake of completeness, the Panel should add that the fact that links on the website to which the disputed domain name resolves might be automatically generated does not prevent a finding of bad faith under the Policy (section 3.5 of the WIPO Overview 3.0).

Thus, in light of the aforesaid, the Panel finds that the Respondent not only knew or should have known the SODEXO mark but also very probably wanted to benefit of its reputation. It is probably that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the SODEXO mark very likely for the purpose of creating confusion with the Complainant’s mark to divert or mislead third parties for the Respondent’s illegitimate profit.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith in accordance with 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 name <sodexonet.co> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: July 26, 2021

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