The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 24, 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 September 6, 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 September 7, 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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 16, 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 BackgroundThe Complainant is a French company, previously called Sodexho Alliance and founded in 1966, which operates in the food services and facilities management services, orientated to companies’ personnel food coverage. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, it simplified the spelling of its mark and name to SODEXO and changed its logo accordingly. The Complainant is one of the largest companies in its sector, with 420,000 employees serving 100 million consumers in 64 countries, and, for fiscal year 2020, consolidated revenues of EUR 19.3 billion. The Complainant is listed as one of “The World’s Most Admired Companies” by FORTUNE Magazine.
The Complainant provides a wide range of services under its trade name and mark SODEXO, falling within three categories: on-site services, benefit and reward services, and personal and home services. The Complainant owns numerous registrations for the trademark SODEXO, inter alia:
- Panama Trademark Registrations No. 167186-01 in Class 9, No. 167188-01 in Class 16, No. 167190-01 in Class 35, No. 167191-01 in Class 36, No. 167193-01 in Class 37, No. 167194-01 in Class 38, No. 167195-01 in Class 39, No. 167196-01 in Class 40, No. 167197-01 in Class 41, No. 167198-01 in Class 42, No. 167199-01 in Class 43, No. 167200-01 in Class 44, and No. 167201-01 in Class 45, of December 12, 2007;
- International Trademark Registration No. 964615, registered on January 8, 2008, in Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; and
- European Union Trade Mark Registration No. 008346462, registered on February 1, 2010, in Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, (collectively the “SODEXO mark”).
Prior decisions under the Policy have recognized the worldwide reputation of the SODEXO mark.
The Complainant further owns numerous domain names corresponding to and/or containing the SODEXO mark, which are used to promote its business, including
Among other countries, the Complainant is established in Panama, promoting its services in its specific corporate website for this country, “www.sodexo.pa”.
The Disputed Domain Name was registered on November 7, 2010, and resolves to a parking page with links to websites related to the Complainant’s sector. This parking page further announces that the Disputed Domain Name may be for sale including a link to a webpage for more information. According to the evidence provided by the Complainant, the parking page linked to the Disputed Domain Name has displayed sections under titles that include the SODEXO mark, namely “Sodexo chèques”, “Sodexo restauration”, and “Sodexo Facilities Management” that were linked to third parties’ websites.
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
The SODEXHO and SODEXO marks have a strong reputation and are widely known all over the world, as has been acknowledged by many decisions under the Policy.2
The Disputed Domain Name incorporates the SODEXO mark adding the elements “net” and “fr”, being the last (“fr”) obviously understood as the geographical abbreviation for France. The SODEXO mark keeps its individuality and is clearly perceived as the predominant part of the Disputed Domain Name. The public will believe that the Disputed Domain Name comes from or is linked to the Complainant.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name, and it is not affiliated to or authorized by the Complainant. The Disputed Domain Name resolves to an inactive parking page. The Complainant has recently faced several attacks, therefore, fears that the Disputed Domain Name may be used to perpetrate an email scam addressed to its clients requesting payment of false invoices.
The Disputed Domain Name was registered and is being used in bad faith. Due to the well-known character and reputation of the SODEXO and SODEXHO marks, and the fanciful character of the term “sodexo”, the Respondent knew or should have known about this mark when it registered the Disputed Domain Name. It is inconceivable that the Respondent could make any active use of the Disputed Domain Name without creating a false impression of association with the Complainant. The Respondent registered the Disputed Domain Name targeting the Complainant and its trademark for creating confusion to divert or mislead third parties for the Respondent’s illegitimate profit. Furthermore, bad faith use may also result from the threat of an abusive use. It appears that the Respondent is offering the Disputed Domain Name for sale to the public. The Respondent’s purpose is very likely to sell the Disputed Domain Name at a profit as it is offering it for sale to the public.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the Disputed Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant indisputably has rights in the registered trademark SODEXO, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.
The Disputed Domain Name incorporates the SODEXO mark in its entirety, adding the term “net” and the letters “fr”, separated by a hyphen, which do not prevent a finding of confusing similarity. The Complainant’s trademark is recognizable in the Disputed Domain Name and the generic Top-Level Domain (“gTLD”) “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the Disputed Domain Name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the Disputed Domain Name.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The Disputed Domain Name incorporates the SODEXO mark in its entirety, adding terms that my refer to the Complainant and its website, namely the term “net”, which may be equivalent to “network” or “web” in the Internet context, and the common abbreviation for France (“fr”), which is the Complainant’s country. The Panel considers that the addition of these terms points to an intention to confuse Internet users seeking for or expecting the Complainant or its business. The addition of terms connected to the Complainant’s trademark and company name SODEXO may be seen as connected to the Complainant and its business, denoting a risk of implied affiliation and confusion.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the Disputed Domain Name, not being authorized to use the SODEXO mark; and there is no evidence that suggests that the Respondent is commonly known by the terms corresponding to the Disputed Domain Name. In this respect, the Panel notes that the Respondent’s name provided in the registration of the Disputed Domain Name was concealed under a privacy registration service.
The Panel has further corroborated that, at the time of drafting this decision, the Disputed Domain Name resolves to a parking page including pay-per-click (“PPC”) links to third parties’ websites in the sectors related to the Complainant’s business. Furthermore, according to the evidence provided by the Complainant, some of these links have been included under sections referring specifically to the SODEXO mark.
Therefore, the Panel finds that no evidence in this case indicates that the Disputed Domain Name has been used or the Respondent has made any preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, or to any legitimate noncommercial or fair use.
It is further remarkable that the Respondent has chosen not to reply to the Complaint, not providing any information or evidence in connection to any rights or legitimate interests in the Disputed Domain Name.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the Disputed Domain Name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the Disputed Domain Name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous extensive use of the SODEXO mark and its presence over the Internet since its launch in 2008 (as well in the form of SODEXHO mark, since 1996), and the well-known character of the SODEXO mark worldwide, as has been recognized by previous decisions under the Policy.3
The Panel has further corroborated that the Complainant is present in Panama since 2003. The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website for this country, “www.sodexo.pa”, as well as various captures on this website archived in the Internet archive WayBackMachine.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Name:
(i) the Disputed Domain Name incorporates the Complainant’s trademark in its entirety, adding terms that may refer to the Complainant or its website;
(ii) the SODEXO mark is a coined word with no meaning in any language, and, particularly, with no meaning in Spanish (official language in Panama, where the Respondent is located according to the Registrar verification);
(iii) the Complainant’s trademark is well known worldwide and the Complainant operates internationally, including Panama, having a specific website for this country in Spanish language (“www.sodexo.pa”);
(iv) according to the evidence provided by the Complainant, the Disputed Domain Name resolves to a parking page including PPC links related to the Complainant’s business, some of them under various sections that include the SODEXO mark in their titles;
(v) the parking page linked to the Disputed Domain Name, further indicates that the Disputed Domain Name may be for sale, including a link to a webpage for more information;
(vi) the Respondent used a privacy registration service; and
(vii) the Respondent has not offered any explanation of any rights or legitimate interests in the Disputed Domain Name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the Disputed Domain Name was registered and is being used targeting the SODEXO mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant and its trademarks.
The purpose behind registration of the Disputed Domain Name appears to have been to attract Internet users to the Respondent’s parking page, in order to obtain any type of benefit from the inclusion of PPC links related to the Complainant’s business (potentially including links to competitors websites), or from the sale of the Disputed Domain Name to the Complainant or to any third party. It is to be noted that the fact that links on the website to which the Disputed Domain Name resolves might be automatically generated does not prevent a finding of bad faith under the Policy. See section 3.5 of the WIPO Overview 3.0.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Disputed Domain Name has been registered and is being used in bad faith.
7. DecisionFor 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,
Reyes Campello Estebaranz
Sole Panelist
Date: December 30, 2021
1 See, inter alia, Sodexo v. Larry Johnson, Arvato Global Group,
WIPO Case No. D2019-1773; Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf/ Name Redacted,
WIPO Case No. D2021-2753; SODEXO v. Bertrant Stephane,
WIPO Case No. D2021-2769; Sodexo v. Yabani Eze, Sugarcane Internet Nigeria Limited,
WIPO Case No. DCO2021-0032; and Sodexo v. c/o WHOIStrustee.com Limited, Registrant of soedexo.com / Jerry Garcia,
WIPO Case No. D2020-1878.
2 The Complainant cites the following decisions under the Policy: Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael,
WIPO Case No. D2020-0865; 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; SODEXO v. Zhichao Yang (杨智超),
WIPO Case No. D2020-2286; SODEXO v. Ashutosh Dwivedi, Food & Beverages,
WIPO Case No. D2020-2686; SODEXO v. 李金梁 (Li Jin Liang),
WIPO Case No. D2020-3064; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2020-3085; Sodexo v. Domain Administrator, Fundacion Privacy Services LTD,
WIPO Case No. D2021‑0472; Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2021-0485; Sodexo v. Daniela Ortiz,
WIPO Case No. D2021-0628; Sodexo v. bin quan wang, wang bin quan,
WIPO Case No. D2021-0629; Sodexo v. Yang Zhichao (杨智超),
WIPO Case No. D2021-0902; and Sodexo v. Lloyd Group,
WIPO Case No. D2021-1214.
3 See footnotes No. 1 and 2, supra.