The Complainant is Sodexo of Issy-Les-Moulineaux, France, represented by Areopage, France.
The Respondent is Carmen Garcia of Lima, Peru. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Power Brand Center Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012. On August 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on October 8, 2012. 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 company offering quality of life, home and personal services. The Complainant’s former name was Sodexho Alliance. In 2008, the Complainant changed its name to Sodexo.
The Complainant owns the following trademark registrations: Peruvian Trademark Registration No. S00052617, registered on September 5, 2008; Peruvian Trademark Registration No. S00052693, registered on September 12, 2008; Peruvian Trademark Registration No. S00052329, registered on August 21, 2008; International Trademark Registration for the mark SODEXHO No. 689106, registered on January 28, 1998; International Trademark Registration for the mark SODEXO No. 964615, registered on January 8, 2008; and European Community Trademark Registration for the mark SODEXO No. 006104657, registered on June 27, 2008.
The Respondent registered the Domain Name on November 20, 2008 under privacy protection. On August 30, 2012 the Registrar advised the WIPO Center that the privacy protection was removed, and that the owner of the Domain Name is Carmen Garcia.
The Domain Name consists of the words “sodexo”, “beneficios” and the generic top-level domain (“gTLD”) “com.” The Domain Name directs to a pay-per-click website featuring French and Portuguese-language links to various types of services. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a French company named Sodexo. The Complainant alleges that it was formerly known as Sodexho Alliance, but that it changed its name to Sodexo in 2008. The Complainant alleges that it is one of the largest food services and facilities management companies in the world.
The Complainant further alleges that the Domain Name is identical or confusingly similar to its marks SODEXHO and SODEXO. The Complainant argues that it owns many registrations in the marks SODEXHO and SODEXO, and that the marks have a strong reputation and are widely known all over the world. The Complainant further argues that the Domain Name identically reproduces the mark SODEXO, almost identically reproduces its other mark SODEXHO, and adds the descriptive Spanish and Portuguese word “beneficios”. According to the Complainant, the presence of the word “beneficios” in the Domain Name is not sufficient to distinguish the Domain Name from the Complainant’s marks.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that the Respondent has no rights in SODEXO or SODEXHO as a corporate name, trade name, shop sign mark or domain name that would precede the Complainant’s rights. The Complainant alleges that the Respondent is not commonly known by the Domain Name, and that the Respondent has no affiliation or connection with the Complainant. The Complainant further alleges that it has not authorized, licensed or otherwise permitted the Respondent or any her affiliated companies to register and use the Domain Name. The Complainant claims that the Domain Name directs to a pay-per-click page in French and Portuguese that features links to third-party websites offering goods or services that are in direct competition with those of the Complainant.
The Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that because of the well-known reputation of the SODEXHO and SODEXO marks, it is unlikely that the Respondent registered the Domain Name without knowledge about the existence of the Complainant’s marks. The Complainant alleges that the Respondent is using the Domain Name to divert Internet traffic to unrelated websites offering competitive or at least similar goods or services to those of the Complainant. The Complainant further alleges that such behavior constitutes an intentional attempt to attract, for commercial gain, Internet users to websites competing with the Complaint. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”1 The complainant must establish “each of the three elements required by paragraph 4(a) of the Policy.”2 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.3 A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has rights to the trademarks SODEXHO and SODEXO by submitting copies of: Peruvian Trademark Registration No. S00052617, registered on September 5, 2008; Peruvian Trademark Registration No. S00052693, registered on September 12, 2008; Peruvian Trademark Registration No. S00052329, registered on August 21, 2008; International Trademark Registration for the mark SODEXHO No. 689106, registered on January 28, 1998; International Trademark Registration for the mark SODEXO No. 964615, registered on January 8, 2008; and European Community Trademark Registration for the mark SODEXO No. 006104657, registered on June 27, 2008.
The Domain Name, which consists of the words: “sodexo”, “beneficios” and the gTLD suffix “.com,” is confusingly similar to the Complainant’s trademarks. The word “sodexo,” which is the dominant component of the Domain Name, is identical to the trademark SODEXO and confusingly similar to the SODEXHO. “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”4 And, the addition of the generic word “beneficios,” which translates from Spanish into English as “beneficial,” is insufficient to avoid confusing similarity between the Domain Name and the Complainant’s trademarks.5 Finally, the addition of a gTLD suffix such as “.com” may be disregarded under the confusing similarity test, as it is a technical requirement of registration.6 Thus, the Domain Name is confusingly similar to the Complainant’s trademarks SODEXO and SODEXHO.
Therefore, the Panel finds that the first element of paragraph 4(a) of the UDRP has been satisfied. B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the UDRP, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.7 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”8 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.9 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel finds that the Complainant has presented a prima facie showing that the Respondent lacks any rights or legitimate interests in the Domain Name. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert Internet users to its website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The record shows that the Respondent used the Domain Name in connection with a pay-per-click page. While such use of a domain name “may be permissible in some circumstances, [it] would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services.”10 “[W]here such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”11 Here, the evidence shows that it is likely that the links displayed on the Respondent’s website were based on the value of the SODEXO mark. The links displayed on the Respondent’s website directed to websites offering business, educational and other types of services. The Complainant alleges and the Respondent does not dispute that the “www.” website features links to third party websites that offer products and services that are in direct competition with those of the Complainant.
In addition, the Respondent is not a legitimate reseller of the Complainant’s services, nor does she use the Domain Name for “legitimate noncommercial or fair use.” According to the Complainant, the Respondent is not an authorized licensee of any of the SODEXO services. She does not also qualify as a legitimate reseller of the Complainant’s goods, because the “www.” website offers goods and services of third parties and does not contain any disclaimer as to the nature of its owner’s relationship with the Complainant.12 Nor does the Respondent’s use of the Domain Name constitute a legitimate noncommercial use of the Domain Name under the UDRP, because it is likely that the Respondent receives remuneration for displaying third-party advertising.
The Panel finds it unlikely that the Respondent is commonly known by the Domain Name. According to the evidence on record, the Domain Name was registered in the name of PrivacyP, a company offering privacy protection services. The owner’s information was changed to Carmen Garcia after July 25, 2012. The name Carmen Garcia has nothing to do with the Domain Name. Furthermore, because the “www.” website contains no information about its owner, and because the Respondent used a privacy services company to appear as the owner of the Domain Name in the WhoIs records, the Respondent cannot be “commonly known” by the Domain Name.
Therefore, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has remained unrebutted by the Respondent, and the Complainant has satisfied the second element of paragraph 4(a) of the UDRP. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”13
The record of this case demonstrates the existence of the Respondent’s bad faith pursuant to paragraph 4(b)(iv) of the UDRP. Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” Among others, these include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent’s] website or location.”14
While the Complainant claims that its trademark is well-known, the Complainant did not provide sufficient evidence of the alleged fame of its marks. Nevertheless, it is likely that the Respondent knew about the Complainant’s trademarks SODEXO and/or SODEXHO at the time of the Domain Name registration and that she registered the Domain Name in bad faith. The Respondent registered the Domain Name ten years after the Complainant registered the trademark SODEXHO and several months after the Complainant registered the trademark SODEXO in Peru, the country where the Respondent purportedly resides. Because the words “Sodexho” and “Sodexo” do not have a meaning independent from the Complainant’s name, and because the dominant part of the Domain Name “sodexo” is confusingly similar to the Complainant’s trademarks, it is likely that the Respondent knew about the Complainant’s trademark and registered the Domain Name to capitalize on its reputation.
Furthermore, the Respondent’s use of the privacy registration service in combination with submission of incorrect or incomplete contact information forms a basis for finding bad faith registration. “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith,… registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”15 Here, the Respondent both used the privacy registration service PrivacyP and, as the case record shows, provided her incorrect or incomplete address in Peru, where she purportedly resides.
The Panel finds that it is likely that the Respondent is using the Domain Name in bad faith. It is plausible that Internet users may be diverted to the Respondent’s website instead of reaching the Complainant’s legitimate website because the Domain Name is confusingly similar to the Complainant’s trademark. Internet users may be confused into believing that the Respondent is affiliated with, or endorsed by, the Complainant.
Furthermore, it is possible that the Respondent derives commercial gain from the operation of the “www.” website by displaying third party advertising on the website. Therefore, the circumstances of this case indicate that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to her website for commercial gain by creating a likelihood of confusion with the Complainant’s SODEXHO and SODEXO trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Because the Panel finds that the Complainant has proved that the Respondent registered and used the Domain Name in bad faith, the Complainant has proved the third element of paragraph 4(a) of the UDRP.
The Complainant, therefore, has proved all three elements of the paragraph 4(a) of the UDRP. 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: October 9, 2012
1 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Id.
3 See, Paragraph 4(a) of the UDRP.
4 Paragraph 1.10 of the WIPO Overview 2.0.
5 See, Paragraph 1.9 of the WIPO Overview 2.0.
6 See, Paragraph 1.2 of the WIPO Overview 2.0.
7 Paragraph 4(a)(ii) of the UDRP.
8 Paragraph 2.1 of the WIPO Overview 2.0.
9 See, Paragraph 2.1 of the WIPO Overview 2.0.
10 Paragraph 2.6 of the WIPO Overview 2.0
11 Id.
12 Paragraph 2.3 of the WIPO Overview 2.0
13 See, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
14 Paragraph 4(b)(ii) and (iv) of the UDRP.
15 Paragraph 3.9 of the WIPO Overview 2.0.
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