The Complainant is SODEXO of Issy-Les Moulineaux, France represented by Areopage, France.
The Respondent is Contact Privacy Inc. of Toronto, Canada/ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on February 27, 2014, 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 March 6, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2014.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2014.
The Center appointed Petter Rindforth as the sole panelist in this matter on April 10, 2014. 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 paragraph 7 of the Rules.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is a French food service and facility management company, founded in 1966.
The Complainant is the owner of a number of trademark registrations for SODEXHO and SODEXO, including:
- Canadian Trademark Registration No. 392568 SODEXHO (word), registered on January 10, 1992;
- Canadian Trademark Registration No. 654335 SODEXHO & Design, registered on December 5, 2005;
- Canadian Trademark Registration No. 811527 SODEXO & Design, registered on November 9, 2011;
- Community Trademark Registration No. 008346462 SODEXO (word), registered on February 1, 2010 in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; and
- International Registration No. 964615 SODEXO & Design, registered on January 8, 2008, in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
The disputed domain name was registered on October 27, 2013. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant states that it is one of the largest food services and facilities management companies in the world, with 428,000 employees on 33,300 sites in 80 countries, being the 18th largest employer worldwide. The Complainant has been named among the world's "Most Admired Companies" in the Fortune Magazine's 2013 corporate reputation survey.
Between the years 1966 – 2008, the Complainant promoted its business under the SODEXHO trademark and trade name. In 2008, the Complainant simplified the spelling of the trademark to SODEXO.
The Complainant provides a wide range of services under the trademark SODEXO, such as i) On-site Service Solutions related to restaurant and catering, ii) Motivation Solutions, and iii) Personal & Home Services including childcare, tutoring and adult education.
The Complainant also operates a website offering job ads at the domain name .
According to the Complainant, the trademarks SODEXHO / SODEXO have strong reputation and are widely known all over the world, in particular in Canada where the Respondent is located.
The Complainant claims that the trademarks SODEXHO / SODEXO have been recognized as well-known in a number of previous UDRP cases.
The Complainant argues that the disputed domain name identically reproduces the Complainants trademark SODEXO, and quite identically reproduces the trademark SODEXHO, with the addition of the non-distinctive element "jobs".
The disputed domain name points to a parking page in French and English with links related to job searches, hospital jobs and work at home as well as links to porn sites, game websites or other various websites. The webpage also states that the disputed domain name is for sale.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name . The Complainant has not given the Respondent any license or other permission to use the trademark or the disputed domain name, and there is no evidence that the Respondent was commonly known by prior to the Complainant's adoption and use of SODEXHO / SODEXO.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. Due to the well-known character and reputation of the SODEXHO / SODEXO trademarks, it is hardly likely that the Respondent registered without knowing the existence of the Complainants prior trademark rights. It is clear that the Respondent registered and held the disputed domain name for the purpose of reselling it at a profit.
The Complainant is also convinced that when registering and using , the Respondent seeks to benefit from the reputation of the trademarks SODEXHO / SODEXO for confusing and attracting Internet users.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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 is the owner of numerous trademark registrations for SODEXHO and SODEXO.
The relevant part of the disputed domain name is "sodexojobs". The addition of the generic Top-Level Domain ".com" is insufficient to distinguish the disputed domain name from the Complainant's mark.
The Panel concludes that the disputed domain name consists of the Complainants trademark SODEXO, and is confusingly similar to the Complainants trademark SODEXHO, with the addition of the generic word "jobs". As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, finding that "[t]he addition of the generic term 'online'…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant's online business"); see alsoSwarovski Aktiengesellschaft v. wutianhao,WIPO Case No. D2010-0503 ("the disputed domain name consists of 'swarovskicrystalshop', which can easily be read as 'swarovski', 'crystal' and 'shop'… Given that the disputed domain name contains the Complainant's mark SWAROVSKI in its entirety, adding the generic terms 'crystal' and 'shop' that are related to the Complainant's crystal products marked with SWAROVSKI does not preclude a finding of confusing similarity").
As noted in the Complaint, the Complainant is ranked as the 18th largest employer worldwide and operates a website with job ads under the domain name . The Panel therefore concludes that the addition of the generic word "jobs" may well be seen as closely related to the Complainant.
The Panel concludes that is confusingly similar to the Complainants trademarks SODEXHO and SODEXO. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant's trademark and is not an authorized agent or licensee of the Complainant's products, services or trademarks. There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in , nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent's use of the disputed domain name for a web site proposing job searches such as hospital jobs, as well as pay-per-click links to other types of websites, was an obvious attempt to mislead customers seeking for the Complainant's services and website and to earn click-through revenue. Such use does not establish rights or legitimate interests. See Fluor Corporation v. A Domain Privacy/ Huanglitech, Domain Admin,WIPO Case No. D2010-0583 (noting that it is "well established" that the use of a domain name to "trade[…] off Complainant's trademark […] is not bona fide" and "cannot confer any rights or legitimate interests" upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyP / Cyber Domain Services Pvt.Ltd.,WIPO Case No. D2010-1680 (registration of a domain name "for the purpose of misleading or diverting consumers" cannotgive to rise rights or legitimate interests").
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As concluded above, the Complainant's trademarks SODEXHO and SODEXO are well protected and well known in numerous countries in the world.
The disputed domain name consists of the Complainant's trademark SODEXO with the addition of a generic word that describes some services related to the Complainant. Thus, it is clear to this Panel that the Respondent had the Complainant's trademark - in both variations - in mind when the Respondent registered the disputed domain name, and that the addition of the generic word "jobs" was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant's mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name. See GA Modefine S.A. v. Thomas Casey,WIPO Case No. D2009-0826 (finding that a respondent's knowledge of a complainant's trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant's trademark and a term "clearly relate[d]" to the complainant's products).
The disputed domain name is used for a website that, among pay-per-click links to different kinds of goods and services, shows job searches such as hospital jobs. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al.,WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng,WIPO Case No. D2011-0364 ("the incorporation of Complainant's trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant's and domain names").
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Date: April 23, 2014
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