The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is VDp fert, VDP FRT, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2021 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 February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2021. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 19, 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. 4. Factual Background Sodexo, the Complainant in the present proceedings, is a French limited company specializing in food services and facilities management with 470,000 employees serving 100 million consumers in 67 countries. The Complainant promoted its business under the SODEXHO trademark and tradename from 1966 to 2008. In 2008, SODEXHO simplified the spelling of its mark and name to SODEXO and changed its logo from to . The SODEXO (prior SODEXHO) mark is used with respect to a wide range of on-site services, benefit and reward services as well as personal and home services. The Complainant owns numerous SODEXHO and SODEXO trademark registrations, including: - International Registration SODEXO n° 1240316 filed on October 23, 2014 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in, inter alia, the United Kingdom; - International Registration n° 689106 filed on January 28, 1998, renewed in 2018, in international classes 16, 36, 37, 39, 41 and 42 protected in, inter alia, the United Kingdom, - European Union Trade Mark registration SODEXO n° 008346462 filed on June 8, 2009, renewed in 2019, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. The Complainant owns also a wide range of domain names incorporating the SODEXHO and SODEXO marks, including The Domain Name was registered by the Respondent on December 14, 2020. Currently, the Domain Name is inactive. 5. Parties’ Contentions A. Complainant The Complainant requests that the Domain Name be transferred to the Complainant. First, the Complainant submits that the Domain Name is identical or confusingly similar to the SODEXHO and SODEXO marks in which the Complainant has rights. In this regard, the Complainant notes that due to the identity of the Domain Name with the SODEXO trademark, the public believes that the Domain Name is linked to the Complainant. Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant alleges that the Respondent was not commonly known by the Domain Name prior to the adoption and use by the Complainant of the SODEXO and SODEXHO trademarks. Moreover, the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been permitted by the Complainant to register the Domain Name. Third, the Complainant contends that the Domain Name was registered and is being used in bad faith. In this regard, the Complainant argues that given the reputation of the SODEXO and SODEXHO trademarks, the Respondent undoubtfully knew of its existence, as well as of the Complainant’s activities, when it registered the Domain Name. According to the Complainant, the Respondent wanted to create confusion with the Complainant’s trademarks to divert or mislead third parties for illegitimate profit. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: (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 in the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Identical or Confusingly Similar The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights. The Complainant holds several valid SODEXO and SODEXHO trademark registrations, which predate the registration of the Domain Name. The Domain Name incorporates the Complainant’s SODEXO trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). The Top Level Domain (“TLD”) in the Domain Name “.icu” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (a) that it has made 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 prior to the dispute; or (b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or (c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence in the record that there are the Complainant’s SODEXO and SODEXHO trademark registrations, which predate the Respondent’s registration of the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Domain Name incorporating its trademark. Moreover, there is no evidence in the record indicating that the Respondent has made any preparations to use the Domain Name in connection with a bona fide offering of goods or services; or that it is commonly known by the Domain Name; or that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. In addition, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Given the above, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. In the present case, the Complainant’s rights in SODEXO and SODEXHO trademarks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. It has been proven to the Panel’s satisfaction that Complainant’s trademarks are well-known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of the services the trademarks identify. The Panel finds that by reproducing the Complainant’s registered trademark in the Domain Name, the Respondent suggests an association with the Complainant in order to attract Internet users to the Respondent’s website. In the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the Domain Name supports the finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest,WIPO Case No. D2012-0676. Thus, for the reasons discussed above, the Panel finds that the Domain Name was registered and is being used in bad faith, according to paragraphs 4(b)(iv) and 4(a)(iii) under 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 disputed domain name Piotr Nowaczyk
Sole Panelist
Date: March 22, 2021
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