The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is bmk logger, United States of America.
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 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Ian Blackshaw as the sole panelist in this matter on December 1, 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, Sodexo, previously called Sodexho Alliance, is a French company, founded in 1966, and is one of the largest companies in the world specialized in foodservices and facilities management, with 420,000 employees serving 100 million consumers in 64 countries. The Complainant is one of the largest employers worldwide.
For the fiscal year 2020, the consolidated revenues of the Complainant reached EUR 19.3 billion, represented by region: 43 percent North America; 40 percent Europe; 17 percent rest of the world.
A copy of the Fiscal 2020 Integrated Report has been provided to the Panel.
The Complainant is listed as one of “The world’s Most Admired Companies” by FORTUNE Magazine, evidence of which has, again, been provided to the Panel.
From 1966 to 2008, the Complainant, then known as Sodexho, promoted its business under the SODEXHO mark and trade name. In 2008, the Complainant simplified the spelling of its mark and name to SODEXO and changed its logo from to
The Complainant provides a wide range of services under its trade name and mark SODEXO (previously SODEXHO) through an offer of on-site services, benefit and reward services, as well as personal and home services.
The Complainant’s mark SODEXO is used in connection with the various activities intended to improve the quality of daily life as shown on the Complainant’s website at “www.sodexo.com/home/services.html”.
The Complainant owns, among others, the International trademark registration no. 964615 for SODEXO (figurative), registered on January 8, 2008.
The Complainant’s SODEXO mark has been continuously and extensively used and protected in numerous jurisdictions around the world, including the United States, under various International Classes. Again, evidence of these registrations has been provided to the Panel.
The Complainant also owns numerous domain names corresponding to and/or containing the mark SODEXO. The Complainant’s group promotes its activities, amongst others, under the following domain names:
The disputed domain name was registered on July 19, 2021, and resolves to a pay‑per‑click (“PPC”) website with links to competitors of the Complainant.
5. Parties’ Contentions A. The Complainant The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.The disputed domain name incorporates the SODEXO mark in its entirety with the addition of the prefix “usa-” and the generic Top-Level Domain (“gTLD”). The letters “usa-” are obviously understood as the geographical abbreviation for the United States.
This minor difference does not distinguish the disputed domain name from the Complainant’s SODEXO mark. See Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117: “It is well established that a domain name consisting of a well-known mark, combined with the applicable geographically descriptive term or phrase, is confusingly similar to the mark”.
Due to the identical reproduction of the SODEXO mark, Internet users will believe that the disputed domain name comes from the Complainant’s group or is linked to the Complainant, especially since the Complainant’s official website for the United States is “us.sodexo.com/home”.
The Complainant’s domain name
The Complainant has become aware that the Respondent has registered the disputed domain name and is using the same as a parking page connecting to the Complainant’s competitor’s websites for CESU (vouchers and cards services for personal and home services), prepaid cards, and meal vouchers.
Furthermore, the SODEXO mark has a strong reputation and is widely known all over the world and previous UDRP panels have recognized these facts and such decisions have been cited by the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to the Complainant’s information, the Respondent has no rights nor legitimate interests in the disputed domain name as he has no rights in “sodexo” as a corporate name, trade name, shop sign, mark, or domain name that would be prior to the Complainant’s rights.
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 or to use it.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name incorporates the Complainant’s widely known mark SODEXO. The word “sodexo” is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.
Previous UDRP decisions have recognized that actual knowledge of the Complainants’ trademarks and activities, at the time of the registration of the disputed domain name, may be considered an inference of bad faith and the Complainant has cited a number of such decisions in its Complaint.
The Respondent is using the disputed domain name by exploiting confusion with the well-known mark SODEXO to attract Internet users and to incite them to click on third-party commercial links, including links to websites of the Complainant’s competitors. This may not only be confusing for the consumers but can also create a dilution of the mark SODEXO.
Registration and use of the disputed domain name by the Respondent can harm the goodwill represented by the SODEXO mark and company name by confusing actual consumers as well as potential consumers and interfering with the Complainant’s business by frustrating attempts by Internet users to reach the Complainant’s official websites. This is an intentional attempt to attract, for commercial gain, Internet users to the Complainant’s competitors’ websites by creating a likelihood of confusion with the well-known mark SODEXO.
As regards the use of a domain name in connection with PPC parking websites, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9 states:
Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Panels have additionally noted that respondent efforts to suppress PPC advertising related to the complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the complainant.
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.
Bad faith registration and use have been recognized in previous UDRP decisions when the disputed domain name resolved to parking pages containing PPC sponsored links based on the trademark value of the domain name. See:
- Champagne Lanson v. Development Services/MailPlanet.com, Inc.,WIPO Case No. D2006-0006: PPC landing pages are not legitimate where sponsored links are based on the trademark value of the domain name.
- Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163: use of a name connected with such well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith.
The unauthorized use and registration of the disputed domain name by the Respondent to attract and redirect Internet users to the websites of the Complainant’s competitors is solely for the purpose of achieving commercial gain and therefore constitutes bad faith registration and use.
B. The RespondentThe Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
6. Discussion and FindingsTo qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140.
In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly SimilarIt is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known and widely used SODEXO registered trademark and this makes the disputed domain name confusingly similar to the Complainant’s well-known and widely used SODEXO registered trademark.
The addition of the prefix “usa-” to the disputed domain name does not prevent a finding of confusing similarity. See Gannett Co, Inc. v. Henry Chan,WIPO Case No. D2004-0117.
Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used SODEXO registered trademark; this being a standard registration requirement of domain names. See Blue Sky Software Corp. v. Digital Sierra Inc.,WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely used SODEXO registered trademark, which the Complainant has demonstrated, to the satisfaction of the Panel, prior rights in and prior commercial use of.
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate InterestsIn order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of the Respondent’s use of, or 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 before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004‑0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used SODEXO registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used SODEXO registered trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well‑known and widely used SODEXO registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s prior commercial use, without any rights or justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. The use of the confusingly similar disputed domain name to resolve to PPC links to competitors of the Complainant does not constitute a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithRegarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] website or location or of a product or service on [its] website or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used SODEXO registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, the Respondent appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its worldwide business activity, as well as its well-known and widely used SODEXO registered trademark and its prior commercial use.
Furthermore, the use of the confusingly similar disputed domain name to resolve to PPC links to competitors of the Complainant constitutes bad faith within the context of paragraph 4(b)(iv) of the Policy.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, including using the disputed domain name as a parking page connecting to the Complainant’s competitors’ websites, and also based on the previous UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name 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
Ian Blackshaw
Sole Panelist
Date: December 13, 2021