The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Domain ID Shield Service, Domain ID Shield Service CO., Limited, China / zhang yan sheng, GNAME. COM PTE. LTD., Singapore. 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 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 the Complainant on March 22, 2021 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 March 25, 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 the Respondent of the Complaint, and the proceedings commenced on March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 5, 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 The Complainant is SODEXO. It is one of the largest companies in the world to specialize in foodservices and facility management. The Complainant is also one of the largest employers worldwide. It has 460,000 employees in 72 countries. The Complainant has operated since 1966. It has offered its services under the brand SODEXO since at least 2008. Before that it was known as SODEXHO (with an h). Both versions of its brand are trademarked. SODEXO Mark The Complainant owns various trademark registrations globally for the SODEXO mark. These include European Union Trademark No. 006104657 (registered June 27, 2008); and International Registration No 1240316 for the word mark (registered October 23, 2014) in classes 9,16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. The Complainant’s trademark SODEXO is continuously and extensively used and protected in 67 countries (e.g. International trademark number 964615 for SODEXO, registered on January 8, 2008). These registrations are collectively referred to as the “SODEXO Mark”. SODEXHO Mark The Complainant also owns multiple registrations for SODEXHO logo in many countries and two international registrations for that earlier iteration of its brand, SODEXHO. These are International Registration No. 689106 and International Registration No. 694302 in classes 16, 36, 37, 39, 41 and 42 and (separately) class 9, and collectively referred to as the “SODEXHO Mark”. The Complainant’s Domain Names The Complainant owns various domain names which incorporate its SODEXO mark, including The disputed domain name The Complainant contends that: (i) The disputed domain name is identical or confusingly similar to the Complainant’s trademarks SODEXO and SODEXHO; and (ii) The Respondent has no rights or legitimate interests in the disputed domain name; and (iii) The Respondent registered and is using the disputed domain name in bad faith. Specifically, the Complainant contends that it owns the SODEXO Mark, and that the mark is well-known to consumers (since the Complainant states it has over 100 million consumers in 67 countries, and significant annual revenues totaling over EUR 22 billion in Fiscal Year 2019). The Complainant further contends that there is close similarity between the spelling of the disputed domain name The Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and further has registered and is using it in bad faith. It says its SODEXO Mark would have been well known to the Respondent and contends that the disputed domain name is characteristic of typosquatting practice intended to create confusing similarity between the Complainant’s Mark. The Complainant submits it fears a possible fraudulent use of the domain name to perpetrate phishing email scams because the Complainant has been regularly targeted in the past and the Respondent’s identity is shielded. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. As already noted the Complainant has registered trademarks for both its SODEXO Mark and its SODEXHO Mark. The Complainant’s business is truly international and of such a size and scope that it has developed a very substantial reputation and goodwill as has been recognized by previous UDRP panels. See Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio ElectronicoWIPO Case No. D2020-1580; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021; Sodexo v. Contact Privacy Inc. Customer 1247228940,WIPO Case No. 2020-1281. The Panel finds the Complainant has rights in the SODEXO Mark and the SODEXHO Mark. The disputed domain name incorporates the Complainant’s SODEXO Mark in full. The disputed domain name contains the additional letter “b” between the “x” and the “o”. The Panel considers this additional “b” does not prevent a finding of confusing similarity because the SODEXO Mark remains clearly visible in the disputed domain name. The Panel also finds that the lower case “b” in the disputed domain name is confusingly similar in form and appearance to the lower case “h” in the SODEXHO Mark. The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is confusingly similar to a trademark in which Complainant has. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or (iii) that 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 overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the SODEXO/ SODEXHO Marks or names. Further the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which the Panel notes resolved to an inactive website. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s SODEXO Mark is internationally well recognized, and that the Respondent ought to have been aware of the Complainant, its SODEXO Mark, and its associated goodwill at the time of registration. A trademark or search engine search by the Respondent would have revealed the Complainant’s trademark rights in the SODEXO Mark. (ii) The Panel finds that the disputed domain name’s confusing similarity to the SODEXO Mark and the fact that it is identical to the Complainant’s Mark but for the addition of the “b” (which is similar in form to the “h” in the Complainant’s SODEXHO Mark by which it was previously known) suggests the Respondent was in fact aware of the Complainant and its Marks and its website at the time of registration, and (given the lack of genuine use or rights by the Respondent) that the disputed domain name was registered for the purpose of purporting to be associated with the Complainant. (iii) The Panel adopts the Complainant’s submission that the sign SODEXO is purely fanciful and that it is unlikely that a third party would legitimately chose the word or any variant thereof, unless seeking to create an association with the Complainant and its activities and marks. (iv) There is a principle established in previous UDRP decisions that the registration of a domain name incorporating a widely-recognized or well-known trademark by someone who has no connection whatsoever with the trademark is a clear indication of bad faith. See Sodexo v. Shahzan - PrivacyProtect.org,WIPO Case No. D2013-1308. (v) It is unlikely that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000 1409. (vi) Bad faith may be also deduced from the fact that the disputed domain name was anonymously registered. See WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2,WIPO Case No. D2012-0033. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) The disputed domain name resolved to an inactive website which is not affiliated with the Complainant. It is the responsibility of the Respondent to monitor how the disputed domain name is used, even if the content on the website to which it resolves was generated by an Internet parking company. Previous UDRP decisions have found that passive use of a disputed domain name can still amount to use in bad faith. See 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. (ii) The Panel accepts the Respondent’s use of the disputed domain name creates a likelihood of confusion with the SODEXO Mark and is therefore likely to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain name or any future emails sent from addresses containing the disputed domain name. (iii) The presence of the disputed domain name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use. See Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564 where the same conclusion was reached. (iv) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. 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 Andrew Brown Q.C.
Sole Panelist
Date: May 19, 2021
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