The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is “On behalf of OWNER c/o ”, United States of America / Tulip Trading Company, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2019. On May 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2019, 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 May 24, 2019 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 May 24, 2019.
The Center verified that the Complaint together with the amendment to the Complaint/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 May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 27, 2019. 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 founded in 1966 and specialized in foodservices and facilities management with a turnover exceeding 20 billion euros worldwide. From 1966 to 2008 the Complainant used its trademark SODEXHO and in 2008 changed its trademark and name to SODEXO. The Complainant’s trademark SODEXO is registered inter alia as a European Union trademark No. 008346462 filed on June 8, 2009 and registered on February 1, 2010. The figurative trademark SODEXHO has been registered inter alia as an international Registration No. 689106 on January 28, 1998 designating several countries in Europe, Asia, and Africa.
The disputed domain name was registered on February 25, 2019. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademarks SODEXO, which includes in its entirety combined with the terms “REWRD” and “HUB”. The word “REWRD” is very close to the word “reward” and overall the disputed domain name is understood as meaning SODEXO REWARD HUB. The disputed domain name is also confusingly similar to the Complainant’s trademark SODEXHO.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and the Respondent has no affiliation, association, sponsorship, or connection with the Complainant and has not been authorized to register and use the disputed domain name.
The Complainant’s trademarks SODEXO and SODEXHO (figurative) have been considered as well-known trademarks by several previous UDRP panels. The Respondent has therefore most likely been aware of the Complainant’s trademark when registering the disputed domain name.
The disputed domain name resolves to a website pretending to be set up by a staff member of Windows support, creating several new websites, which is known as “mouse-trapping”, used to prevent the Internet users from leaving the website. This is used to spread computer viruses or malware. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has submitted proof that it is the proprietor of the registered trademarks SODEXO and SODEXHO (figurative). The disputed domain name contains the Complainant’s trademark SODEXO in its entirety combined with the terms “rewrd” and “hub”. The Panel considers the difference between the Complainant’s two trademarks to be minimal and effectively irrelevant here, especially phonetically because the letter “h” in the trademark SODEXHO is silent.
As the Complainant submits, the term “rewrd” closely resembles the English word “reward” and is therefore merely a typo of the correct word. The word “hub” can be understood as a center or centralized portal. Taken as a whole, these two terms combined with the Complainant’s trademarks give the overall impression that the Respondent’s website would be a centralized place for obtaining rewards from the Complainant. Combining the Complainant’s trademark with such terms is not sufficient to remove confusing similarity with the disputed domain name.
For the sake of good order, the Panel considers that the figurative element consisting of five stars arranged in a semi-circle in the Complainant’s earlier trademark SODEXHO (figurative) confers only limited distinctive character to that iteration of the Complainant’s trademark. Hence, the most distinctive element of the Complainant’s earlier trademark is the word SODEXHO.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor it has been authorized by the Complainant to use and register the disputed domain name. The Respondent has no prior rights or legitimate interests in the disputed domain name, it has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and it is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings above, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] 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 trademark 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 or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”.
Considering the arguments and evidence submitted by the Complainant, the Panel agrees with previous panels that the Complainant’s trademarks SODEXO and SODEXHO are well-known trademarks. It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademarks when registering the disputed domain name.
The Complainant has submitted evidence that the disputed domain name resolves to a website in French pretending to offer services relating to the Windows operating system. Instead, the website opens multiple new windows preventing the Internet users from leaving the website and making the taskbar and the browser’s menu inaccessible. This technique is known as “mouse-trapping” and is used to install viruses or malware onto the Internet user’s computer. The Panel considers that the disputed domain name is used to deceive Internet users by taking advantage of the Complainant’s reputation and then attempting to harm Internet users.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: July 11, 2019
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