The Complainant is Sodexo of Issy-Les-Moulineaux, France, represented by Areopage, France.
The Respondent is Takashi Yamaguchi of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China‑C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2017, 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 February 20, 2017.
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 February 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 23, 2017. 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 food services and facilities management company, founded in 1966 in France. The Complainant now has 425,000 employees serving 75 million consumers in 80 countries and is the 19th largest employer worldwide. In the 2016 fiscal year the Complainant had revenues of EUR 20.2 billion. From 1966 to 2008, the Complainant traded under the name “Sodexho” before simplifying the spelling to “Sodexo”. In 1998, the Complainant’s United States of America (“United States”) subsidiary merged with Marriott Management Services, and for a number of years traded under the name Sodexho Marriott Services.
The Complainant is the owner of a number of trade mark registrations consisting of the word “sodexo” including the word mark SODEXO (the “SODEXO Mark”), which was first registered on February 1, 2010 (European Union Trade Mark registration number 008346462), and a device mark featuring the word “sodexho” and 5 small stars in a semi-circular pattern (the “SODEXHO Mark”), which was first registered in France on June 22, 1998.
The Domain Name was registered on April 12, 2016. The Domain Name resolves to an Internet site (“the Respondent’s Website”) which is in Japanese and, according to the Complainant, is a blog featuring several articles, particularly about the use of credit cards and consumer opinions about various Internet purchases. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SODEXO and SODEXHO Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SODEXO and SODEXHO Marks, having registered the SODEXO and SODEXHO Marks internationally, including in Japan, the location of the Respondent.
The Domain Name wholly reproduces the SODEXHO Mark with the addition of “marriott”. In the Domain Name, the SODEXHO Mark keeps its attractive and individual character and the addition of the sign “marriott” only directly refers to the former corporate name “Sodexho Marriott Services”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to operate what appears to be a blog and the Complainant cites Red Bull GmbH v. Maxwell Arnold,WIPO Case No. D2014-1589, as an authority that the use of a domain name composed of a well-known mark to connect to a personal blog does not establish rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The word “sodexho” is purely fanciful and nobody would legitimately choose this word or the combination with the element “marriott” or any variation thereof for a domain name, unless seeking to create an association with the Complainant. Moreover the use of the Complainant’s SODEXO and SODEXHO Marks to direct Internet users to a blog constitutes evidence of bad faith use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SODEXO and SODEXHO Marks, having registrations for the SODEXO and SODEXHO Marks as trade marks in various countries around the world, including (in the case of the SODEXHO Mark) Japan, the location of the Respondent.
The Domain Name consists of the SODEXHO Mark minus the star element (not reproducible in a domain name) with the additional word “marriott” which reproduces the former name of the Complainant’s United States subsidiary. As the word “marriott” is an addition of a word that has been in the past closely associated with the Complainant, the addition of that word does not prevent a finding of confusing similarity. An individual viewing the Domain Name, who is only aware of the Complainant by the former name of its subsidiary, may be confused into thinking that the Domain Name refers to the Complainant. In any event, as held by many previous UDRP panels, the inclusion of a trade mark in its entirety, together with additional terms, is typically sufficient for a finding that a domain name is confusingly similar to a complainant’s trade mark under the first element of the Policy, as is the case here. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SODEXHO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SODEXO and SODEXHO Marks or a mark similar to the SODEXO and SODEXHO Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial use.
It appears that the Respondent has used the Domain Name to operate a personal blog. It is unclear whether this blog has a commercial purpose or if the Respondent receives revenue from the Domain Name. It is also unclear how the content of the Respondent’s Website relates in any way to the Domain Name or what reason the Respondent could have had to select that Domain Name (consisting of a pair of entirely fanciful words that precisely reflect the former name of the Complainant) other than to capitalise on any confusion between the Domain Name and the Complainant.
The case of Red Bull GmbH v. Maxwell Arnold, supra considered whether rights or legitimate interests arise when a respondent operates a personal blog (apparently unconnected to the trade mark) on a domain name composed of a well-known mark. The panel stated that:
“Moreover, Respondent has also stated that the intended activity for his blog is not connected with Complainant or its trademarks in anyway. Assuming this to be true, Respondent’s point further undercuts any right or legitimate interest in the Domain Name that is confusingly similar to Complainant’s famous RED BULL trademarks. The right to express one’s views is not the same as the right to use another’s well-known trademark in a confusing manner (in a domain name) to identify one’s self as the source of those views. See e.g., Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763; Monty & Pat Roberts Inc. v. J. Bartell,WIPO Case No. D2000-0300.
Thus, in balancing the rights of Complainant in its well-known RED BULL mark, and the rights of Respondent to choose freely a domain name for expressing his views in a personal blog on subjects yet to be identified, the Panel concludes that Respondent has impermissibly taken advantage of Complainant’s commercial interests in its mark.”
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including an explanation for why it chose the Domain Name and submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the SODEXO and SODEXHO Marks at the time the Domain Name was registered. The Domain Name reproduces the former name of the Complainant’s United States subsidiary exactly, which consists of two fanciful words. It is difficult to conceive of a reason (and the Respondent has not chosen to provide one) for the registration of the Domain Name other than by reference to the SODEXO and SODEXHO Marks and the Complainant more generally.
In the circumstances, the Respondent’s unauthorized registration of the Domain Name when it was aware of the Complainant’s rights amounts to registration in bad faith.
The Respondent has been the respondent in four prior UDRP cases. In each case the panel found that the Respondent had registered and used domain names corresponding to existing trade marks in bad faith. They were:
- Dr. Ing. h.c. F. Porsche AG v. Takashi Yamaguchi / Domain ID Shield Service CO., Limited,WIPO Case No. D2014-0071;
- Philip Morris USA Inc. v. Takashi Yamaguchi, NAF Claim No. FA1310001527651;
- Arrowhead Central Credit Union d/b/a Arrowhead Credit Union v. Takashi Yamaguchi, NAF Claim No. FA1411001591652; and
- DORNA WSBK ORGANIZATION S.R.L. v. Takashi Yamaguchi, Czech Arbitration Court Case No. 101057.
Given the Respondent’s awareness of the Complainant and its marks, the lack of connection between the subject-matter of the Respondent’s Website and the Domain Name, and the fact that the Respondent has been a frequent participant in prior UDRP proceedings, the Panel is satisfied that the Respondent has registered the Domain Name in order to prevent the Complainant, being the owner of the SODEXO and SODEXHO Marks, from reflecting those marks in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, , be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: March 28, 2017
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