The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Bertrant Stephane, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 30, 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 2, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 6, 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 the SODEXO, a French company specialized in foodservices and facilities management.
The Complainant communicates directly to its customers via its website “www.sodexo.com”.
The Complainant is the owner of several national, international and European trademark registrations SODEXO, among which:
- French Trademark registration SODEXO n° 073513766 registered on July 16, 2007, renewed in 2017, for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- International Trademark registration SODEXO n° 964615 registered on January 8, 2008, under priority of the French trademark registration n° 073513766 of July 16, 2007, renewed in 2017, for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in the numerous countries;
- International Trademark registration SODEXO n° 1240316 registered on October 23, 2014, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 protected in the following countries: Iran (Islamic Republic of), Mozambique and United Kingdom.
The Respondent registered the disputed domain name
At the time of the present decision, the disputed domain name is not active.
5. Parties’ Contentions A. ComplainantFirst, the Complainant claims that the disputed domain name
Indeed, the disputed domain name is composed of the sign SODEXO associated to the words “maintenance” and “services”.
Previous UDRP panels have considered the SODEXO trademark to be “well-known”.
In the disputed domain name
The addition of the descriptive words “maintenance” and “services” in the disputed domain name is not sufficient to distinguish it from the Complainant’s marks.
Due to the identical reproduction of the SODEXO mark, the Complainant alleges that the public will believe that the disputed domain name
Then, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO.
Moreover, the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.
Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
Due to the well-known character and reputation of the SODEXO mark, the Respondent knew its existence when he registered the identical disputed domain name
The Respondent not only knows the mark SODEXO, but wants to benefit of its reputation.
It is obvious that the Respondent registered the disputed domain name
Even if the disputed domain name, which has been recently created, does not presently have any active content, a passive holding of a domain name does not prevent a finding of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsNotwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant owns numerous trademark rights on the name SODEXO.
This trademark is fully reproduced in the disputed domain name
The addition of the words “maintenance” and “services” does not prevent a finding of confusing similarity.
It has been consistently decided in cases under the Policy that adding a term to an established mark does not affect the finding that a domain name is confusingly similar (e.g. AB Electrolux v. Haron Ali, SWAQNY/ Whoisguard protected, Whoisguard, Inc.,
WIPO Case No. D2017-0920,
WIPO Case No. D2019-1122,
Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has satisfied its burden of proof here: the Complainant has argued that it does not know the Respondent, is not connected to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services.
Furthermore, the composition of the disputed domain name, consisting of the Complainant’s trademark with the addition of words “maintenance” and “services” cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
See Sodexo v. Privacy service provided by Withheld for Privacy ehf / Andrew Dacxd,
WIPO Case No. D2021-2474.
The Respondent did not reply to the Complaint.
In view of the above and in the lack of any response from the Respondent, the Panel is satisfied that it is more than likely that the Respondent does not use the disputed domain name for a bona fide offering of goods or services. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith;
(i) circumstances indicating that you have registered, or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.
Considering that the Complainant has established goodwill and reputation on the SODEXO trademark and that the disputed domain name incorporates that trademark in its entirety, the Respondent had necessarily the Complainant’s trademark in mind when it registered the disputed domain name.
Indeed, the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.2.2 (“WIPO Overview 3:0”)).
The disputed domain name does not resolve to an active webpage and the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.
In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name
In all these circumstances the Panel holds that the disputed domain name
The Panel finds that the above described circumstances constitute registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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
Alexandre Nappey
Sole Panelist
Date: October 20, 2021