Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Daniela Ortiz, Chile. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2021, 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 Complainant on March 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 8, 2021. 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on April 17, 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 Complainant is one of the largest companies in the world specialized in restaurant, catering, food services and facilities management serving more than 100 million consumers in sixty-seven countries. Complainant owns valid and subsisting registrations for the SODEXO trademark, in numerous countries, including in Armenia Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Switzerland, China, Algeria, Egypt, the European Union, Iran (Islamic Republic of), Iceland, Israel, Japan, Kyrgyzstan, Democratic People’s Republic of Korea, Republic of Korea, Kazakhstan, Lesotho, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, Namibia, Norway, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America, United Kingdom, Uzbekistan, Viet Nam, and Chile, where Respondent is apparently located, with the earliest priority dating back to July 16, 2007. The disputed domain name was registered on December 16, 2020. At the time of this Complaint, the disputed domain name resolved to a GoDaddy parking webpage with an offer to sell the disputed domain name inquiring “Interested in sodexospa.com?”, plus pay-per-click hyperlinks in French to third party services in competition with Complainant, namely “Enterprise Restaurant Collective”, “Prets Enterprises”, “Panier Repas Livre”, “Enterprise de Restaurant Collective”, “Machine a Decouper”, and “Pliable Bac”. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the SODEXO trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including in Chile, where Respondent is located, with earliest priority dating back to September 12, 2008. The disputed domain name is confusingly similar to Complainant’s SODEXO trademark, according to Complainant, because SODEXO keeps its individuality and is clearly perceived by consumers as the predominant part of the disputed domain name, and the addition of the term “spa” is not sufficient to distinguish Complainant’s SODEXO trademark. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any use by Respondent as a corporate name, trade name, shop sign, mark or otherwise with priority to Complainant’s rights; the lack of any evidence that Respondent is known by the term “sodexo”; and the lack of any affiliation, association, sponsorship, connection, license, authorization, or otherwise permission from Complainant for Respondent to use the SODEXO trademark. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the fanciful and well-known nature of the SODEXO trademark, as recognized by prior WIPO panels; and Respondent’s use of the disputed domain name in connection with a pay-per-click parking website with links to Complainant’s competitors. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii. the disputed domain name has been registered and is being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the SODEXO trademark has been registered in numerous regions and countries with priority dating back to July 16, 2007 (nearly 14 years before the disputed domain name was registered). Thus, the Panel finds that Complainant’s rights in the SODEXO trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s SODEXO trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s SODEXO trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . The Panel concurs with Complainant that this confusing similarity is not dispelled by combination with the term “spa”. (Here, it is noted that “spa” could mean a number of things, e.g., a type of pool, or more likely the Italian corporate identifier.) WIPO Overview , section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”). In view of Complainant’s registration for the SODEXO trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which if done shifts the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 . It is evident that Respondent, identified by registration data for the disputed domain name as “Daniela Ortiz”, is not commonly known by the disputed domain name or Complainant’s SODEXO trademark. Moreover, service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant, by linking to services offered by Complainant’s competitors, and accordingly cannot constitute a bona fide offering of goods or services using the disputed domain name. See generally WIPO Overview 3.0 , section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”). Finally, based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. This is especially the case where a disputed domain name is so obviously connected with a complainant and its products, the very use, let alone attempts to monetize or sell, by a registrant with no connection to a complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had Complainant’s SODEXO trademark in mind when registering the disputed domain name, and that Respondent most likely registered domain name in order exploit and profit from Complainant’s trademark rights. Moreover, to the extent the “spa” addition in the disputed domain name to Complainant’s mark is intended to create an impression that the disputed domain name is somehow officially endorsed by or related to Complainant, this clearly would not support any notion of rights or legitimate interests on the part of Respondent. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s attempts to confuse Internet users and trade off the goodwill of the SODEXO trademark with pay-per-click ads to Complainant’s competitors, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Where a complainant’s trademark is widely known, including in a particular industry, or highly specific, and respondents cannot credibly claim to have been unaware of complainant, panels have inferred that respondents knew, or should have known, that their registration would be identical or confusingly similar to a complainant’s trademark. Here, Complainant has submitted ample evidence that the SODEXO trademark is widely known, as recognized by multiple prior panels, and the Panel concurs that when the disputed domain name was registered on December 16, 2020, Respondent clearly must have had Complainant’s pre-existing rights to the SODEXO trademark in mind. Sodexo v. 张存硕 (Cun Shuo Zhang), WIPO Case D2020-0312; WIPO SODEXO v. Contact Privacy Inc. Customer 1246053778 / Edwin Smith, WIPO Case D2020-0566; SODEXO v. Contact Privacy Inc. Customer 1245764941 / Chivers Michael, WIPO Case D2020-0673; SODEXO v. Wis INC, Wis INC, WIPO Case D2020-0887; SODEXO v. WhoisGuard Protected, WhoisGuard, Inc. / Austin Miller, Llyods Limited,WIPO Case No. D2020-0957; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World,WIPO Case No. DCO2020-0021; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman,WIPO Case No. D2020-1281; Sodexo v. Registration Private, Domains By Proxy, LLC / Krissa Pucket,WIPO Case No. D2020-1315; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1580; Sodexo v. Contact Privacy Inc. Customer 1247189803 / NorAm Accounts Receivable,WIPO Case No. D2020-1683; SODEXO v. Super Privacy Service LTD c/o Dynadot / Zhichao,WIPO Case No. D2020-1762. Registration of the disputed domain name with intent to profit by exploiting Complainant’s trademark and selling that domain name constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where inter alia Respondent clearly has knowledge of Complainant’s trademarks; the trademarks at issue are distinctive and well-known, as established by prior panel determinations; Complainant’s trademarks well predate registration of the disputed domain name, the parking page pay-per-click hyperlinks associated with the disputed domain name target the Complainant’s competitors; and Respondent offers to sell the disputed domain name to the highest bidder or otherwise to the general public. WIPO Overview 3.0 , section 3.1.1 . Specifically, Respondent parked the disputed domain name with GoDaddy, which serviced pay-per-click hyperlinks to services in competition with Complainant, and listed on its website an open invitation to the public to purchase the disputed domain name. This falls well within paragraph 4(b)(i) of the Policy. Respondent’s monetization of the disputed domain name in such a manner is clear evidence of Respondent’s opportunistic bad faith intention to acquire and monetize and possibly sell the disputed domain name, which is confusingly similar to Complainant’s SODEXO trademark. Indeed, third-party generated material, such as parking websites with pay-per-click links, cannot be disclaimed by Respondent to prevent a finding of bad faith. WIPO Overview , section 3.5 (“A respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497 (“It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith … Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site”) (internal citations omitted). In view of the well-known nature of Complainant’s SODEXO trademark including as established by prior panel determinations, Respondent’s open offer to sell the disputed domain name to the general public, and Respondent’s attempts to confuse Internet users and trade off the goodwill of the SODEXO trademark with pay-per-click hyperlinks to Complainant’s competitors, the Panel concludes that Complainant has established the third element 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 disputed domain name Phillip V. Marano
Sole Panelist
Date: May 3, 2021
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