The Complainant is Sodexo of Issy-les-Moulineaux, France, represented by Areopage, France.
The Respondent is Sodexo Consulting of Sheans Creek, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2013, 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 26, 2013 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 26, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 26, 2013. 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.
The Panel finds that the language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant is a French company founded in 1966. With its nearly 420,000 employees in 80 countries it offers services in a broad range of sectors under its trade name and trademark SODEXO. The Complainant integrates a complete offer of innovative services, based on over 100 professions.
The Complainant owns trademark registrations for the mark SODEXO in many jurisdictions, including:
- International Trade Mark Registration No. 964615 registered on January, 8, 2008 in numerous countries, including Australia for goods and services of classes 9, 16, and 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter: the Nice Classification);
- Australian Trade Mark Registration No. 755152 registered from February 18, 1998 for goods and services of classes 9, 16, 36, 37, 39, 41 and 42.
- Canadian Trade Mark Registration No. 811527 registered on September 11, 2011 for vast types of goods and services;
- Malaysian Trade Mark Registration No. 07023823 applied for on July 16, 2007 for goods of class 9 of the Nice Classification as well as other registrations for vast types of goods and services; and
- Community Trade Mark Registration No. 8346462 applied for on June, 8, 2009 and registered on February, 2, 2010 for goods and services of classes 9, 16 and 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 of the Nice Classification.
The publicly available WhoIs indicates that the disputed domain name was registered on June 9, 2013.
Both at the time of submission of the Complaint and rendering of this administrative decision, the website under the disputed domain name featured the website of the Respondent, Sodexo Consulting. At this website, listing Darwin, Australia as its headquarters, and Winnipeg, Manitoba, Canada as its branch office, the Respondent Sodexo claims to be the chief world company which provides such services as financial risk management, insurance and reinsurance courtage, consulting in labor power resource and outtasking. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name identically reproduces its SODEXO trademark with the addition of the descriptive word “consulting” to the trademark. Therefore, the disputed domain name is confusingly similar to its inherently distinctive SODEXO trademark in which the Complainant has long established and reputed rights based on a number of trademark registrations.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name reproduces the Complainant’s distinctive SODEXO trademark, and the Respondent has registered and is using the disputed domain name to attract consumers to its website by creating a likelihood of confusion with the Complainant’s SODEXO trademark.
The Complainant alleges that when registering the disputed domain name the Respondent knew that SODEXO is one of the largest employers worldwide and wanted to benefit of its reputation for attracting job seekers.
The Complainant contends that the Respondent’s bad faith is clearly manifested in false presentation made in the website “www.” looking like an official website of the Complainant and proposing fake job offers for fraudulently asking money from job seekers who contact the entity hidden behind the email address “[…]@” or who reply to the emails sent by the individual called M. Abramson. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or services mark in which the complainant has rights;
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced extensive evidence that it holds registered rights in the trademark SODEXO. For the purpose of this proceeding, the Panel establishes that the Complainant’s International Trademark Registration No. 964615, Australian Trade Mark Registration No. 755152, Canadian Trade Mark Registration No. 811527, Malaysian Trade Mark Registrations Nos: 07023823 – 35 and Community Trade Mark Registration No. 8346462 all for the mark SODEXO satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in SODEXO, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the SODEXO trademark of the Complainant.
According to paragraph 1.2 of the “WIPO Overview 2.0” in order to satisfy the threshold test for confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common or descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name fully incorporates the Complainant’s SODEXO trademark. The SODEXO trademark in not a common word; it identifies the business of the Complainant. The disputed domain name differs from the Complainant’s trademark SODEXO in having the descriptive term “consulting” added to the trademark, and in the view of this Panel, this amounts to confusing similarity between the Complainant’s trademark and the disputed domain name. Consumers will likely think that the disputed domain name is connected to the Complainant.
For all these reasons, the Panel finds that the element of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted uncontested evidence that it holds well-established rights in the trademark SODEXO.
The Complainant never authorized the Respondent to use its SODEXO trademark in any way, and the Complainant’s prior rights in the SODEXO trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so it failed to offer the Panel any the type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances (further discussed at 6.C, below), the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, the widespread recognition of the Complainant’s SODEXO trademark, and its incorporation into the disputed domain name in its entirety is indicative to the Panel that the Respondent had obviously been aware of the SODEXO trademark and has registered the disputed domain name to misappropriate the value of the Complainant’s SODEXO trademark, which is indicative of bad faith registration of the disputed domain name.
At its website under the disputed domain name the Respondent lists Darwin, Australia as place of its headquarters, but the search performed by the Complainant in the Australian Trade Register did not yield any corporate or business name in Australia under the name of the Respondent, Sodexo Consulting.
Also at the website under the dispute domain name , the Respondent identifies itself as Sodexo and claims to be “the chief world company which provides such services as financial risk management, insurance and reinsurance coverage, consulting in labor power resource and outtasking”. If this were true and correct, it is inconceivable to this Panel that the Respondent is not listed as a corporation or business name in the jurisdiction of its headquarters, Australia. The Respondent could have provided evidence of the opposite, but it defaulted and failed to respond. As a matter of fact the courier company notified the Center that at the address provided the Respondent was not known, as well as nobody for or on behalf of the Respondent replied to the messages left on the voice mail by the courier company. The written notice to the Respondent was undeliverable.
The Complainant produced conclusive evidence to the Panel that the Respondent was using the website under the disputed domain name , appearing like an official website of the Complainant, for making fake job offers by fraudulently asking money from job seekers contacting the entity behind the Respondent’s email address “[…]@”. Such registration and use of the disputed domain, known as a “job scam” was clearly intended to fraudulently attract Internet users to the website of the Respondent for commercial gain which in the view of this Panel evidently constitutes bad faith registration and use of the disputed domain name.
The Panel is convinced that the Respondent has registered and is using the disputed domain name in order to create confusion among Internet users and divert them to its website within the meaning of paragraph 4(b)(iv) of the Policy.
For all the above discussed reasons the Panel finds that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) is satisfied. 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 be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Dated: August 9, 2013
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