The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Kaplan Batur, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on August 19, 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 Founded in 1966, the Complainant is a French company that is a food services and facilities management company. The Complainant has 470,000 employees serving 100 million consumers in 67 countries worldwide. The Complainant provides a wide range of services under its trade name and trademark SODEXO. From 1966 to 2008, the Complainant used the name and trademark SODEXHO to promote its business under the SODEXHO mark and trade name. In 2008, the Complainant simplified the spelling of its mark and trade name to SODEXO and also changed its logo to reflect the new spelling. The Complainant provides a suite of services comprised of on-site services, benefit and reward services and personal and home services. The Complainant owns, among others, the following registered marks: - SODEXO (word and design mark), International Trademark Registration No. 964615, registered on January 8, 2008 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, designating certain jurisdictions worldwide, including Turkey, where the Respondent is located; - SODEXO (word mark), International Trademark Registration No. 1240316, registered on October 23, 2015 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, designating certain jurisdictions worldwide; - EXPERIENCIA (word mark), International Trademark Registration No. 1499600, registered on September 16, 2019 in international classes 9, 35, 41, 42, 44, and 45, designating certain jurisdictions worldwide; and - EXPERIENCIA BY SODEXO (word and design mark), European Union Trade Mark No. 018225522, filed on April 14, 2020 (pending) in international classes 9, 35, 41, 42, 44, and 45, in France. The foregoing trademarks are hereinafter referred to as the “SODEXO and EXPERIENCIA Marks”. The Complainant owns numerous domain names corresponding to and/or containing the mark SODEXO or SODEXHO. For instance, among others, the Complainant owns The Disputed Domain Name was registered on April 14, 2020. The Disputed Domain Name resolves to a landing page that offers the Disputed Domain Name for sale for USD 9,450. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the SODEXO and EXPERIENCIA Marks. It is uncontroverted that the Complainant has established rights in the SODEXO and EXPERIENCIA Marks based on their many years of use as well as the registered trademarks for the SODEXO and EXPERIENCIA Marks in numerous jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the SODEXO and EXPERIENCIA Marks. The Disputed Domain Name It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy despite the addition of a dictionary term, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s SODEXO and EXPERIENCIA Marks. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0 , section 2.1 . There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s SODEXO and EXPERIENCIA Marks. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the use made of the Disputed Domain Name to resolve to an inactive landing page that offers the Disputed Domain Name for sale, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the Respondent has demonstrated bad faith registration and use by attracting, for commercial gain, Internet users to the Respondent’s landing page and creating a likelihood of confusion with the Complainant’s SODEXO and EXPERIENCIA Marks. The use of a domain name to attract Internet users to a registrant’s website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s online location for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s use of the significant goodwill in the SODEXO and EXPERIENCIA Marks by registering the Disputed Domain Name and offering that Disputed Domain Name for sale for USD 9,450, well in excess of its out-of-pocket costs, demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Second, even if the landing page were to be considered as an inactive or passive holding of the Disputed Domain Name, the Panel finds that such passive holding would not prevent a finding of the Respondent’s bad faith. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574. Here, the Disputed Domain Name currently resolves to an inactive landing page, thus demonstrating bad faith. Finally, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known SODEXO and EXPERIENCIA Marks creates a risk of implied affiliation with the Complainant’s SODEXO and EXPERIENCIA Marks, affirming the bad faith registration and use. See EbayInc. v. Wangming,WIPO Case No. D2006-1107; VeuveClicquotPonsardin, MaisonFondéeen 1772 v. ThePolygenixGroupCo.,WIPO Case No. D2000-0163 (use of a domain name connected with such a well‑known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: August 27, 2020
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