The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 22, 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 27, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. Three communications were filed with the Center from a person claiming identity theft on October 6, 11, and November 18, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 10, 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 food service and facility management company, founded in 1966.
The Complainant is the owner of a number of trademark registrations for SODEXHO and SODEXO, including:
- Canadian Trademark Registration No. 392568 SODEXHO (word), registered on January 10, 1992;
- Canadian Trademark Registration No. 654335 SODEXHO & Design, registered on December 5, 2005;
- Canadian Trademark Registration No. 811527 SODEXO & Design, registered on November 9, 2011;
- Community Trademark Registration No. 008346462 SODEXO (word), registered on February 1, 2010 in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; and
- International Registration No. 964615 SODEXO & Design, registered on January 8, 2008, in respect of goods and services in classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
The disputed domain name
The disputed domain name is currently not in use.
5. Parties’ Contentions A. ComplainantAccording to the Complainant, the trademarks SODEXO have strong reputation and are widely known all over the world. The Complainant claims that the trademarks SODEXO have been recognized as well-known in a number of previous UDRP cases.
The Complainant argues that the disputed domain name identically reproduces the Complainant’s trademark SODEXO, with the addition of the double vowel “EE”. According to the Complaint, this is an obvious misspelling of the trademark SODEXO which can be made by an Internet user, and is characteristic of typo squatting practice intended to create confusing similarity between the Complainant trademark and the Respondent domain name.
The disputed domain name is currently inactive. However, the Complainant states that the company has faced several attacks and fears a possible fraudulent use of the dispute domain name to perpetrate email scam sent to its clients requesting payments of false invoices on fake Sodexo bank accounts.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not given the Respondent any license or other permission to use the trademark or the disputed domain name, and there is no evidence that the Respondent was commonly known by the disputed domain name prior to the Complainant’s adoption and use of SODEXO.
Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. Due to the well-known character and reputation of the SODEXO trademarks, it is hardly likely that the Respondent registered the disputed domain name without knowing the existence of the Complainant’s prior trademark rights. It is clear that the Respondent registered and held the disputed domain name for the purpose of reselling it at a profit.
The Complainant request the transfer of the disputed domain name.
B. RespondentThere was no formal response from the Respondent, however an email was sent on October 6, 2021, to the Center explaining that the person mentioned in the email was not aware of this domain name and had nothing to do with it. Further on October 11, and November 18, 2021 a letter was sent to the Center explaining that their email account “was hacked and multiple domains including the domain ‘sodeexo.com’ were added”. They requested to be removed from the case.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has provided sufficient evidence that it has registered and common law rights in the trade marks SODEXO.
Further, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. The only difference is the addition of the letter “e” in the disputed domain name that does not change the conclusion with respect to confusing similarity.
As for the addition of the generic top-level domain (“gTLD”) “.com”, it has been well established in numerous UDRP decisions that such addition may be disregarded when considering the issue of identity or confusing similarity.
In conclusion, the Panel finds the disputed domain name to be confusingly similar to the SODEXHO and SODEXO trademarks that the Complainant has rights in.
Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s SODEXO trademarks have been extensively used and registered for many years and other UDRP panels before have found that the Complainant’s trademarks are well known. See Sodexho Alliance v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0287, Sodexo v. Shahzan,WIPO Case No. D2013-1308, Sodexo v. Sodexho Catering,WIPO Case No. D2013-1950.
On the other hand, the disputed domain name was only recently registered and there is no evidence that the Respondent has been commonly known by the disputed domain name.
Moreover, the Respondent has not been licensed nor authorized by the Complainant to use the SODEXO mark or to register and use the disputed domain name.
The Respondent’s silence in these proceedings and failure to take advantage of the opportunity presented to show that it has rights or legitimate interests in the disputed domain name or that it has been engaged in a bona fide offering of services, are factors which the Panel has noted and from which it draws a negative inference.
In such circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name consists of the Complainant’s well-known trademark, very slightly misspelt with the addition of the letter “e” and the gTLD “.com”. The Respondent must have known or been put on notice of the need to check whether the Complainant owned trademark rights. This is a typical case of typosquatting.
In the circumstances, there appears to have been no reason for the Respondent to register the disputed domain name except to reflect the Complainant’s trademark.
In addition there has been a non-authorized use of someone else identity to register the disputed domain name. The Panel takes this as further evidence of bad faith registration and use of the domain name.
The Panel determines that the Respondent registered and has used the disputed domain name in bad faith within the meaning 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
For purposes of properly executing this order, the Panel also directs the Registrar's attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name
The Panel directs the Center that Annex 1 shall not be published along with this decision.
Pablo A. Palazzi
Sole Panelist
Date: Novermber 22, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel orders that the Respondent’s name be redacted from this decision. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.