The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Contact Privacy Inc. Customer 1246780534, Canada / Chivers Michael, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2020, 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 April 20, 2020 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 April 24, 2020. 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 3, 2020. 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 the French limited company Sodexo (previously called Sodexho Alliance), founded in 1966. The Complainant owns, among others, the following trademark registrations: Trademark Registration Number Registration Date Classes Jurisdiction SODEXO (design) 964615 January 8, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 Various countries including the United States SODEXO QUALITY OF LIFE SERVICES (design) 1195702 October 10, 2013 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45 Australia, China, United States SODEXO 1240316 October 23, 2014 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 Iran, Mozambique, United Kingdom SODEXHO (design) 689106 January 28, 1998 16, 36, 37, 39, 41, 42 Various countries including Denmark, Finland, Germany, Greece, Iceland, Japan, Norway, Sweden SODEXO (design) 006104657 June 27, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 European Union SODEXO & design TMA811527 November 9, 2011 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44 and 45 Canada SODEXHO & design TMA654335 December 5, 2005 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44, 45. Canada The Complainant is the holder of, among others, the domain name The disputed domain name was registered on March 27, 2020. The disputed domain name does not resolve to any website. According to the Complaint, the Respondent has used the disputed domain name to send an email supposedly in the name of the Complainant, thus impersonating said Complainant. 5. Parties’ Contentions A. Complainant The Complainant argued the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. That the Complainant was founded in 1966, and that it is one of the largest companies in the world, specializing in foodservices and facilities management, with 470,000 employees, serving 100 million consumers in 67 countries. That the Complainant is one of the largest employers worldwide, which revenues for fiscal year 2019 reached 22 billion EUR, representing by region: 45% North America, 39% Europe, 16% rest of the world. That the Complainant is listed as one of “The world’s Most Admired Companies” by FORTUNE Magazine. That from 1966 to 2008, the Complainant promoted its business under the SODEXHO trademark and trade name. That in 2008, SODEXHO simplified the spelling of its trademark and name to the term SODEXO and changed its logo. That the Complainant provides a wide range of services under its trade name and trademark SODEXO through an offer of on-site services, benefits and reward services, as well as personal and home services. That the trademark SODEXO is used in connection with services related to restaurant and catering, facility management services and workplace services including a wide-range of on-site services such as reception services, technical maintenance and repair, housekeeping, security, laundry, waste management and space management, among others. That, in addition to the above, the trademark SODEXO is used in connection with service vouchers and cards for private and public organizations and childcare, tutoring and adult education, concierge services and home care services for dependent persons. That the Complainant’s group promotes its activities, among others, under the following domain names: That the SODEXO trademark is continuously and extensively used and protected in various classes in 67 countries, including the United States where the Respondent has its domicile. That the Complainant is widely established in various countries, including the United States where the Respondent is located. That the trademarks SODEXHO and SODEXO have a strong reputation and are widely known all over the world. That the UDRP panels have already recognized the well-known character of the SODEXHO/SODEXO trademark (and cites Sodexho Alliance v. LaPorte Holdings,Inc,WIPO Case No. D2005-0287; Sodexo v. Shahzan – PrivacyProtect.org,WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering,WIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc., Jack Sun,WIPO Case No. D2013-2187; Sodexo v. Jack Brabham,WIPO Case No. D2014-1781; Sodexo v. Sodexo Now,WIPO Case No. D2015-0071; Sodexo v. Elena Shaffer,WIPO Case No. D2015-0810; Sodexo v. Li Li,WIPO Case No. D2015-1018, among others). That the term “sodéxo” included in the disputed domain name is almost identical to the Complainant’s trademark and company name SODEXO, as it reproduces it entirely with the only difference of an accent on the central vowel “e”. That the addition of an accent in the term incorporated in the disputed domain name may correspond to a misspelling of the Complainant’s trademark SODEXO. That due to the close similarity between the disputed domain name and the Complainant’s trademark SODEXO, the public could undoubtfully believe that the disputed domain name comes from the Complainant’s group or is linked to it. That the Complainant has become aware of an email sent by a person claiming to work for said Complainant, claiming to be the Complainant’s “Unit Controller”. That the fraudulent email came from an email address associated with the disputed domain name, and that it was used in an attempt to obtain an undue payment. (ii) The Respondent has no rights or legitimate interests in the disputed domain name. That the Respondent has no rights to, nor legitimate interests in the disputed domain name as it has no rights on “sodexo” or “sodexho” as corporate name, trade name, trademark or domain name that precede the Complainant’s rights. That the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and trademarks SODEXO and SODEXHO. That the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and that said Respondent has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it. (iii) Registration and use in bad faith. That due to the well-known character and reputation of the Complainant’s trademark SODEXO, the Respondent knew about its existence when he registered the disputed domain name. That the Respondent was aware that he had no rights or legitimate interests in the disputed domain name. That the Complainant’s trademark SODEXO is purely fanciful, and that nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant. That the Complainant has been involved in another domain name dispute against the Respondent, concerning the registration of the domain name That the registration and use of the disputed domain name to send a fraudulent email in order to mislead third parties, and to try to fraudulently obtain money, constitute bad faith. That bad faith may be also deducted from the fact that the disputed domain name was registered through a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V.,WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has submitted evidence showing that it owns trademark registrations for SODEXO and SODEXHO in various classes and countries, including the United States where the Respondent appears to be located. The disputed domain name is almost identical to the Complainant’s trademark SODEXO, as it incorporates said trademark in its entirety, the only difference being the substitution of a letter “e” for a symbol “é”, which does not constitute an element that differentiates said disputed domain name from the Complainant’s mark nor prevent a finding of confusing similarity. The disputed domain name configuration constitutes a case of typosquatting, since it incorporates a common misspelling of the Complainant’s trademark SODEXO (see Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; LinkedIn Corporation v. Daphne Reynolds,WIPO Case No. D2015-1679; Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073). The disputed domain name is an Internationalized Domain Name (“IDN”) which is formed by characters from different scripts. This type of domain name is encoded by the Unicode standard and is used in accordance with the relevant IDN protocol. Therefore, the disputed domain name can be displayed as “sodéxo.com” with the non-ASCII symbol “é” visually similar to vowel “e” (see Multi Media, LLC v. One and One Private Registration, 1&1 Internet, Inc. / Papadad Manaloto,WIPO Case No. D2018-0952; Facebook Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Toster Serwerowy,WIPO Case No. D2019-1668). It is well established among UDRP panelists appointed under the Policy that a domain name containing an intentional misspelling of a trademark, including the use of non-Latin internationalized or accented characters, is confusingly similar to the trademark in question (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also L’Oréal v. Anonymous Corp, Ken,WIPO Case No. D2013-0710; Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-2211). In the present case, the Panel considers that the use of a non-ASCII character, which resembles the Latin character “e”, presents a visual image of the Complainant’s trademark SODEXO. Therefore, the Complainant’s trademark will be immediately recognized in the disputed domain name, as the accent on the vowel “e” is an insignificant difference, which does not avoid the risk of confusion among the public (see L’Oréal v. Anonymous Corp, Ken,WIPO Case No. D2013-0710; Société Air France v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2019-1005; Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-2211). The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is a technical requirement of the Domain Name System, and therefore has no legal significance in the present case (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; Compagnie Générale des Etablissements Michelin v. Gui He Xing,WIPO Case No. D2018-1446). The first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name, as it has no rights over the trademark SODEXO. Furthermore, the Complainant has stated that the Respondent is not affiliated or associated to the Complainant, that the latter does not sponsor the former, and that said Respondent has not been authorized, licensed or otherwise permitted to register the disputed domain name and to use it. The Complainant also alleges that the Respondent was not commonly known by the disputed domain name prior to the adoption and use of the corporate name, business name and trademarks SODEXO by the Complainant. None of these affirmations have been challenged by the Respondent. The disputed domain name does not resolve to any website. Nevertheless, in accordance with the evidence presented by the Complainant, the disputed domain name was used to operate an email address, which was used to send an email from a person that claimed to be the Complainant’s “Unit Controller”. The email fraudulently represented that a bank account that had been previously given to the recipient of said email, had been re-assigned to payments related to a different unit of the Complainant. Furthermore, the email stated that all the payments made to this allegedly incorrect account had been transferred to the “correct” one. The email also informed the user that the updated bank account information, which was attached to the email, was to be used in relation to any further payments. This conduct cannot be considered to be a legitimate noncommercial or fair use of the disputed domain name (see Seminole Tribe of Florida, d/b/a Seminole Gaming v. Privacy Protect, LLC / Ibro King, Akara Inc,WIPO Case No. D2018-1692; Centro de Promociones Los Cabos San Lucas, S.A. de C.V. v. Domains by Proxy, LLC. / Martha Becerra,WIPO Case No. D2019-1908; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org,WIPO Case No. D2014-0133). Furthermore, the Panel notes that it is well established that, under section 2.13.1 of the WIPO Overview 3.0, the use of a domain name for illegal activities such as phishing, impersonation, or other similar types of fraud can never confer any rights or legitimate interests to a respondent (see section see also Seminole Tribe of Florida, d/b/a Seminole Gaming v. Privacy Protect, LLC / Ibro King, Akara Inc,WIPO Case No. D2018-1692; Facebook, Inc. v. Werner Gonzalez,WIPO Case No. D2017-2046; Zions Bancorporation, N.A. v. Domain Administrator, PrivacyGuardian.org / Tobe Uche,WIPO Case No. D2018-2930). In the light of the above, the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use 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 your 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 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 its website or location. The Complainant has established rights over the SODEXO trademark internationally, including in the United States where the Respondent appears to be located. The dates of registration of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name. Furthermore, the Complainant has proven the well-known character of the SODEXO trademark and its association with several services worldwide. Based on the evidence filed by the Complainant, this Panel agrees with previous UDRP panels in the sense that the trademark SODEXO is well known (see Sodexho Alliance v. LaPorte Holdings,Inc,WIPO Case No. D2005-0287; Sodexo v. Shahzan – PrivacyProtect.org,WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering,WIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc., Jack Sun,WIPO Case No. D2013-2187; Sodexo v. Jack Brabham,WIPO Case No. D2014-1781; Sodexo v. Sodexo Now,WIPO Case No. D2015-0071; Sodexo v. Elena Shaffer,WIPO Case No. D2015-0810; Sodexo v. Li Li ,WIPO Case No. D2015-1018). The Respondent’s registration of the disputed domain name which is confusingly similar to the Complainant’s trademark SODEXO, a mark which, in addition to being well known, has an extensive global presence, suggests that the Respondent knew about the Complainant and its trademark SODEXO at the moment of registration. This indicates that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it and to fraudulently pass off the Respondent as the Complainant (see section 3.2.1 of the WIPO Overview 3.0, see also Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980). Furthermore, the Panel is aware of another proceeding substantiated before the Center in which it was established that the Respondent had registered a domain name that incorporated a term confusingly similar to the Complainant’s trademark SODEXO. In said case, the UDRP panel found that the respondent had registered and was using the domain name with the intention of improperly obtaining benefits and harming the Complainant’s reputation in the market (see SODEXO v. Contact Privacy Inc. Customer 1245764941 / Chivers Michael,WIPO Case No. D2020-0673). Therefore, the Panel notes that the Respondent has clearly engaged in a pattern of bad faith conduct by registering at least two domain names that incorporate variations of the Complainant’s trademark SODEXO, which constitutes bad faith under paragraph 4(b)(iii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0 , see also Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi,WIPO Case No. D2017-0391; Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods,WIPO Case No. D2016-0256; Haas Food Equipment GmbH v. Usman ABD, Usmandel, Case No. D2015-0285). As to the use of the disputed domain name, it has served as an instrument used to commit fraud, to send deceptive emails. The Respondent’s impersonation of the Complainant in order to mislead the recipient of the false email, and to obtain undue payments constitutes bad faith(see section 3.4 of the WIPO Overview 3.0, see also Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., / GREYHAT SERVICES,WIPO Case No. D2016-0385; JEANOLOGIA, S.L. v. Bright, Brightmorgan Pty Ltd,WIPO Case No. D2017-0848; Seminole Tribe of Florida, d/b/a Seminole Gaming v. Privacy Protect, LLC / Ibro King, Akara Inc,WIPO Case No. D2018-1692). Accordingly, the third element of the Policy has been met. 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 Kiyoshi Tsuru
Sole Panelist
Date: June 19, 2020
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