The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 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 December 21, 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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2021. The Center appointed Jeremy Speres as the sole panelist in this matter on January 22, 2021. 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. Given that all three Domain Names are registered in the name of the Respondent, the Panel accepts the multiple domain name Complaint in terms of the Rules, paragraph 3(c). 4. Factual Background The uncontested facts are as follows. The Complainant was founded in 1966 and is a large, multinational food services and facilities management company. The Complainant trades in Panama (the jurisdiction of the Respondent), amongst many other territories. For the fiscal year 2019, the Complainant’s worldwide revenues reached EUR 22 billion. From 1966 to 2008 the Complainant traded under the SODEXHO mark, which changed to SODEXO in 2008. Apart from its core food services and facilities management services, the Complainant also offers, amongst others, benefits and rewards services in terms of which vouchers and cards are issued to its customers and their employees as part of loyalty and rewards schemes. The Complainant owns many trade mark registrations around the world for its SODEXHO and SODEXO marks in classes of relevance to its business, all predating registration of the Domain Names, mostly by many years. For the purposes of this Complaint, the most relevant are its Panama registrations, all filed on December 12, 2007, in classes 9, 16, 35-45, for a stylised SODEXO mark, under registration numbers 167186-01, 167188-01, 167190-01, 167191-01, 167193-01, 167194-01, 167195-01, 167196-01, 167197-01, 167198-01, 167199-01, 167200-01 and 167201-01. The Domain Names were all registered on November 20 or 24, 2020, by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, redirected to various websites exhibiting click-through advertisements for businesses that compete with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names stand to be transferred to it under the Policy given that they all constitute typosquatting taking advantage of its well-known trade mark, and the resultant confusion is being exploited by the Respondent to attract Internet users to its advertising platform for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Names are confusingly similar to the Complainant’s registered SODEXO mark. It is well-established that where the domain incorporates the entirety of the trade mark which is recognisable within the domain (as in this case), the addition of other terms would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Here the trade mark is the first and most prominent element of the Domain Names. The remainders of the Domain Names, apart from the generic Top-Level Domain (“gTLD”) “.com”, consist of obvious misspellings of the common terms “benefits” and “center”, which are less unique and memorable than the first part of the Domain Names (the Complainant’s mark) and which do not serve to render the Complainant’s mark unrecognisable within the Domain Names. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, there is a prima facie case which the Respondent has failed to rebut. The Complainant’s evidence establishes that the Complainant’s SODEXO mark was used extensively and enjoyed considerable goodwill in many territories, including Panama, prior to registration of the Domain Names. The Complainant has succeeded in various UDRP proceedings in which the panels accepted that its mark is well-known, including in cases that involved the addition of misspellings of “benefits” and “center” to the Complainant’s mark, and a respondent based in Panama, as in this case. See for e.g. Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1580. The Domain Names are confusingly similar to the Complainant’s well-known, registered mark and the Complainant has certified that the Domain Names are unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy. The only evidence of use of the Domain Names is that of redirection to parked pages comprising advertisements linked to third-party commercial websites (pay-per-click “PPC”) offering services which compete with the Complainant. UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The Panel has independently viewed the Hypertext Markup Language (“HTML”) code for the advertising pages to which the Domain Names redirect and has established that the pages serve advertisements utilising the Google AdSense program on a PPC basis. UDRP panels have found that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the complainant’s mark (WIPO Overview 3.0 at section 2.9). The Panel has also searched the Internet Archive, which contains no historical evidence of use of the Domain Names that might otherwise confer rights or legitimate interests upon the Respondent. The Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term, as in this case) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here. There are clear indicators that the Respondent intentionally registered and has used the Domain Names with the Complainant’s mark in mind in order to rely on a likelihood of confusion with the Complainant’s mark for purposes of commercial gain, per paragraph 4(b)(iv) of the Policy: i. the Complainant’s mark was registered, in use (including in Panama) and well-known long in advance of registration of the Domain Names; ii. the Complainant’s mark is invented and fanciful and the Domain Names make no sense other than as referencing the Complainant; iii. the Domain Names contain the Complainant’s mark and misspelled words that are descriptive of some of the Complainant’s services; and iv. the Domain Names have been used to advertise competitors of the Complainant with PPC advertisements. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. A respondent cannot disclaim responsibility for programmatically generated PPC content. See WIPO Overview 3.0 at section 3.5. Although not raised by the Complainant, the Panel has established that the Domain Names are for sale on domain marketplace Sedo with a minimum offer of USD 500 for each – most likely in excess of the out-of-pocket costs related to the Domain Name. This is further evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy. The Panel has also independently established that the Domain Names are all configured with the same mail exchange or “MX” Domain Name System (“DNS”) records enabling use for email, with the risk of email phishing being clear (see W.W. Grainger, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Thomas,WIPO Case No. D2020-1740). The Respondent has attempted to conceal its identity by using a privacy service. Given the totality of the facts, this is a further indicator of bad faith (section 3.6 of the WIPO Overview 3.0). Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0; see also Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171). The Complainant has satisfied 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 Names Jeremy Speres
Sole Panelist
Date: January 26, 2020
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