The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Ilan Sigura, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 8, 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 10, 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 13, 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 BackgroundIt results from the Complainant’s undisputed allegations that the Complainant is a French company founded in 1966 and one of the largest companies in the world specialized in foodservices and facilities management. The Complainant employs 420 000 employees serving 100 million consumers in 64 countries, including the United States of America, where the Respondent is located. For the fiscal year 2020, the Complainant indicates its consolidated revenues to reach 19,3 billion euros.
From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, SODEXHO simplified the spelling of its mark and name to SODEXO.
Furthermore, it results from the undisputed evidence provided by the Complainant that the Complainant is the registered owner of many trademarks consisting of or containing the verbal element SODEXO, covering amongst others, the United States of America, such as:
(1) International trademark registration SODEXO (figurative) no 964615 filed on January 8, 2008 under priority of the French trademark registration n° 07 3 513 766 of July 16, 2007, renewed in 2018, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, designating amongst others the USA.
(2) International trademark registration SODEXO (verbal) no 1240316 filed 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.
It results from the WhoIs extract provided by the Complainant that the Disputed Domain Name’s creation date is July 30, 2021.
The Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Disputed Domain Name is confusingly similar to the SODEXO trademarks in which the Complainant has rights because it comprises said trademark which is clearly recognizable within the Disputed Domain Name. The addition of the double letter “S” at the beginning of the sign 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 prior rights or legitimate interests in the Disputed Domain Name. In this context the Complainant contends that (i) it has not licensed or otherwise authorized the Respondent to register the Disputed Domain Name; (ii) the Respondent is not commonly known by the Disputed Domain Name.
Finally, the Complainant contends that the Respondent registered the Disputed Domain Name in bad faith. The Complainant submits that registration of a domain name including a widely well-known and fanciful trademark points to bad faith, and that the lack of an active website at a Disputed 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 the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should 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 is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and 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 trademarks containing or consisting of the verbal element SODEXO. Reference is made to International trademark registrations SODEXO (figurative) no 964615 and SODEXO (verbal) no 1240316. These trademark registrations predate the creation date of the Disputed Domain Name, which is July 30, 2021.
The Disputed Domain Name includes the trademarks SODEXO in its entirety and merely doubles the letter “s” at its beginning. This single-letter difference does not avoid a confusing similarity between the Disputed Domain Name and the Complainant’s trademark SODEXO, in particular regarding its wording and pronunciation. All to the contrary, this Panel has no doubts that in a side-by-side comparison of the Disputed Domain Name and the relevant trademark SODEXO, the latter mark is clearly recognizable without any further ado within the Disputed Domain Name.
In 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 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 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.
It results from the evidence provided by the Complainant that the Disputed Domain Name is currently not connected to any website. Such (lack of) use can be considered neither a bona fide offering of goods or services nor 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 at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Furthermore, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the Disputed Domain Name pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is therefore deemed to have 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.
First it is to be noted that the non-use of a Disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Furthermore, the Complainant has to the Panel’s satisfaction proved a worldwide reputation of its SODEXO trademark and company that has existed since 1966. Therefore, this Panel agrees with previous UDRP panels holding that the fanciful trademark SODEXO enjoys a wide reputation. Therefore, it is the view of this Panel that the Respondent would have known that the Disputed Domain Name interferes with the Complainant’s well-known SODEXO trademark when registering the Disputed Domain Name (see Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael,WIPO Case No. D2020-0865; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman,WIPO Case No. D2020-1281).
Considering the high similarity between the trademark SODEXO and the Disputed Domain Name, which suggests the Respondent’s awareness of the trademark, the Panel finds that the Respondent registered and is using the Disputed Domain Name for bad faith purposes. Relevant factors are (i) the high degree of distinctiveness and the worldwide reputation of the Complainant’s mark, (ii) the identical incorporation of the well-known trademark into the Disputed Domain Name, (iii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iv) the implausibility of any good faith use to which the Disputed Domain Name may be put and finally (v), the Respondent concealing its identity behind a privacy shield.
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
Tobias Malte Müller
Sole Panelist
Date: October 27, 2021