The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is A Jackson, 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 25, 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 26, 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 August 31, 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.
The Center appointed Federica Togo as the sole panelist in this matter on October 17, 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 registered owner of several trademarks consisting and/or containing SODEXO, e.g. European Union Trade Mark registration no. 008346462 for SODEXO (word), registered on February 01, 2010 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force. International registration no. 964615 for SODEXO, registered on January 08, 2008 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force.
It results from the information disclosed by the Registrar that the disputed domain name was registered on June 28, 2021 and currently does not resolve to an active website.
5. Parties’ Contentions A. ComplainantIt results from the Complainant’s undisputed allegations that the Complainant was 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. It is widely established, among other places, in the United States of America where the Respondent is located. It is one of the largest employers worldwide and provides a wide range of services under its trade name and mark SODEXO through an offer of on-site services, benefit and reward services, and personal and home services.
In addition, the Complainant operates the domain names
The Complainant contends that its trademark SODEXO has a strong reputation and is widely known all over the world.
The Complainant further contends that the disputed domain name is identical or confusingly similar to its trademark SODEXO, since the disputed domain name is composed of the sign “siodexo”, which is almost identical to the mark and company name SODEXO. The only difference between the signs is the addition of the letter “i” between the letters “s” and “o”. Such a difference corresponds to an obvious misspelling of the mark SODEXO which can be made by an Internet user and is characteristic of typosquatting practice intended to create confusing similarity between the Complainant’s mark and the Respondent’s domain name.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent 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 on SODEXO. The Respondent was not commonly known by the disputed domain name. Moreover, it 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.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s undisputed allegations, due to the well-known character and reputation of the SODEXO mark, the Respondent undoubtfully knew its existence when he registered the disputed domain name and was also informed about the Complainant’s activities. It is obvious that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the SODEXO mark, very likely for the purpose of creating confusion with the Complainant’s mark to divert or mislead third parties for the Respondent’s illegitimate profit. Even if the disputed domain name 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 FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for SODEXO. Reference is made in particular to e.g. European Union Trade Mark registration no. 008346462 for SODEXO (word), registered on February 01, 2010 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force. International registration no. 964615 for SODEXO, registered on January 08, 2008 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force.
It is the view of this Panel that the addition of the vowel “i” between the letters “s” and “o” in the disputed domain name results to be a common, obvious, or intentional misspelling of the Complainant’s trademark and cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the disputed domain name contains sufficiently recognizable aspects of the relevant mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.9.
Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark SODEXO, e.g., by registering the disputed domain name which is confusingly similar with the Complainant’s trademark.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Moreover, the Panel notes that the trademark SODEXO is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s trademark and trade name by attracting Internet users for commercial gain (e.g.,Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello,WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847).
It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark SODEXO is widely known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known of the Complainant’s trademark when registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed SODEXO mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g.,Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100).
Moreover, the Panel finds that the non-use of the domain name does not prevent a finding of bad faith under the doctrine of passive holding, see WIPO Overview 3.0 at section 3.3 with further references.
In fact, the further circumstances surrounding the disputed domain name’s registration and use affirm the finding that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark SODEXO is widely known; (2) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; and (3) the implausibility of any good faith use to which the disputed domain name may be put.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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
Federica Togo
Sole Panelist
Date: October 31, 2021