The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2021. The Center appointed Marina Perraki as the sole panelist in this matter on July 30, 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 a French company that was founded in 1966 and is one of the largest companies specialized in food services and facilities management, with 420,000 employees serving 100 million consumers in 64 countries. For the fiscal year 2020, consolidated revenues of Complainant reached EUR 19.3 billion. Complainant is listed as one of “The World’s Most Admired Companies” by FORTUNE Magazine. From 1966 to 2008, Complainant promoted its business under the SODEXHO mark and trade name. In 2008, Complainant simplified the spelling of its brand to SODEXO. Complainant provides a wide range of services under SODEXO, through on-site services, benefit and reward services as well as personal and home services. Complainant is the owner of the following registered trademarks for SODEXO: - International trademark registration No. 964615, SODEXO (fig.), registered on January 8, 2008 under priority of the French trademark registration No. 07 3 513 766 of July 16, 2007, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - International trademark registration No. 1240316, SODEXO (fig.), registered on October 23, 2014, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - European trademark registration No. 008346462, SODEXO (word), filed on June 8, 2009 and registered for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; and - European trademark registration No. 006104657, SODEXO (fig.), filed on July 16, 2007 and registered for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. Complainant is also the owner of domain names for SODEXO, including: The Domain Name was registered on April 6, 2021 and leads to a page written in French which is presented as a WINDOWS official page, where in fact it is, per Complainant, a TechScam or a virus. Per Complaint, the main pop-up window can be translated in English as follows: “Windows has been blocked due to suspicious activity. Please call us within the next 5 minutes to prevent your computer from being disabled. Contact technical support: 09-74-32-00-22”. The user thinks that the computer is actually locked. As the page seems to be a WINDOWS official page, the user is then incited to call the phone number mentioned on the page to try to solve the problem. When calling the above number, an operator requests the user to download a software allowing him to access the computer, remotely. To do this, the user gives a code to the user. Inserting the code is likely, per Complaint, to infect the computer or to install a malware/spyware. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s trademark SODEXO in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the words “northmamericanportal” namely “north”, “american”, “portal” and the letter “m” placed before the word “american” as a clear misspelling of this word, does not avoid a finding of confusing similarity as the SODEXO mark remains recognizable within the Domain Name (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft,WIPO Case No. D2013-0904, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.9). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the SODEXO mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Name leads to a page written in French which is presented as a WINDOWS official page, where in fact it is, per Complainant, a TechScam or a virus. Per Complaint, the main pop-up window can be translated in English as follows: “Windows has been blocked due to suspicious activity. Please call us within the next 5 minutes to prevent your computer from being disabled. Contact technical support: [ … ]”. The user thinks that the computer is actually locked. As the page seems to be a WINDOWS official page, the user is then incited to call the phone number mentioned on the page to try to solve the problem. When calling the above number, an operator requests the user to download a software allowing him to access the computer, remotely. To do this, the user gives a code to the user. Inserting the code is likely, per Complaint, to infect the computer or to install a malware/spyware. Use of a domain name for illegal activity (e.g., distributing malware) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1) . In addition, the nature of the Domain Name, comprising Complainant’s trademark in its entirety in combination with the non distinctive terms “North (M) American Portal”, carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1 ). This, along with the fact that the Domain Name is registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the 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. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the SODEXO mark had been widely used and registered at the time of the Domain Name registration by Respondent and it enjoys reputation as repeatedly recognized (Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers MichaelWIPO Case No. D2020-0865; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio ElectronicoWIPO Case No. D2020-1580) the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent could have searched the WIPO or EUIPO trademark registries and would have found Complainant’s prior registrations in respect of SODEXO (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). The Domain Name was therefore created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3). As regards bad faith use, Complainant demonstrated that Respondent used the Domain Name to direct visitors to a page written in French which is presented as a WINDOWS official page, where in fact it is, per Complainant, a TechScam or a virus. Per Complaint, the main pop-up window can be translated in English as follows: “Windows has been blocked due to suspicious activity. Please call us within the next 5 minutes to prevent your computer from being disabled. Contact technical support: [ … ]”. The user thinks that the computer is actually locked. As the page seems to be a WINDOWS official page, the user is then incited to call the phone number mentioned on the page to try to solve the problem. When calling the above number, an operator requests the user to download a software allowing him to access the computer, remotely. To do this, the user gives a code to the user. Inserting the code is likely, per Complaint, to infect the computer or to install a malware/spyware. Use of a domain name for purposes such as phishing or malware distribution, constitutes bad faith use (WIPO Overview 3.0, section 3.4) and further evidences bad faith (Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC,WIPO Case No. D2018-2510). The Panel considers also the apparent concealment of the Domain Name holder’s identity through use of a privacy shield, which is further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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, Marina Perraki
Sole Panelist
Date: August 13, 2021
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