WIPO Domain Name Decision D2021-3412 for bitesodexo.com, mysodexosavingsplancom.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2021-3412 1. The Parties

Complainant is Sodexo, France, represented by Areopage, France.

Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names and are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 28, 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 Respondent of the Complaint, and the proceedings commenced on October 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. Respondent did not submit any response. On November 26, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 19, 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 Background

Complainant SODEXO was founded in France in 1966 and specializes in foodservices and facilities management. Complainant has 420,000 employees serving 100 million consumers in 64 countries. It is one of the largest employers worldwide. Fortune Magazine lists SODEXO as one of “The World’s Most Admired Companies.” From 1966 until 2008, Complainant promoted its business under the mark SODEXHO. In 2008, Complainant simplified the spelling of its mark to SODEXO.

Complainant uses its SODEXO mark in connection with on-site restaurant and catering services, as well as facility management services and workplace services, including a wide-range of on-site services such as reception services, technical maintenance and repair, housekeeping, security, laundry, waste management and space management. Complainant also uses its SODEXO mark in connection with benefits and rewards service vouchers and cards for private and public organizations. These include employee benefits to attract, engage and retain employees (such as restaurant vouchers, transport vouchers, gasoline vouchers), incentives and recognition to help organizations to reach their qualitative and quantitative objectives (such as gift vouchers and git boxes), and public benefits to manage and control the distribution of aid and public subsidies. Complainant also uses its SODEXO mark in connection with personal and home services, including childcare, tutoring and adult education, concierge services and home care for dependent persons.

Complainant owns numerous domain names incorporating its SODEXO mark, including , , , , , , , , and .

Complainant also uses the term “bite” in connection with its “bite app” that is available for download at Complainant’s website located at “www.bite.sodexo.com”. Complainant also uses the term “savings plan” to describe its services, including “401(k) employees’ retirement savings plan and trust.”

Complainant also owns numerous registered trademarks for its SODEXO mark in many jurisdictions, including but not limited to the following:

SODEXO - Panama trademark registrations Nos. 167186-01, 167188-01, 167191-01, 167190-01, 167191-01, 167193-01, 167194-01, 167193-01, 167197-01, 167199-01, 167200-01, 167201-01;

SODEXO - international trademark registration No. 964615 registered on January 8, 2008 under priority of French trademark registration No. 073 513 766 of July 16, 2007, renewed in 2018, and designating the following jurisdictions:

Algeria, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Egypt, European Union, Islamic republic of Iran, Iceland, Israel, Japan, Kazakhstan, Kyrgyzstan, Republic of Korea, Kazakhstan, Lesotho, Morocco, Monaco, Republic of Moldova, Montenegro, Mongolia, Namibia, Norway, Russian Federation, Singapore, Serbia, Switzerland, Turkey, Ukraine, United States of America, Uzbekistan and Viet Nam.

Previous UDRP panels have accepted that Complainant’s SODEXO trademark is well-known worldwide.

Sodexo v. Domaines By Proxy/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085; Sodexo v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2021-0472; Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0485; Sodexo v. Daniela Ortiz, WIPO Case No. D2021-0628; Sodexo v. bin quan wang, wang bin quan, WIPO Case No. D2021-0629; Sodexo v. Yang Zhichao, WIPO Case No. D2021-0902; Sodexo v. Lloyd Group., WIPO Case No. D2021-1214.

The disputed domain name was registered on August 17, 2021. The disputed domain name was registered on October 1, 2021.

The disputed domain name redirected to a malicious website. The disputed domain name resolved to a parking website providing pay-per-click links.

5. Parties’ Contentions A. Complainant

Complainant contends that the disputed domain names are confusingly similar to Complainant’s SODEXO mark, that Respondent has no rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules instructs the 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”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has rights in the trademark SODEXO in connection with the goods and services summarized above. The disputed domain names incorporate Complainant’s mark in its entirety, with the addition of the words “bite” in one disputed domain name, and the words “my” and “savingsplancom” in the second disputed domain name. These words do not avoid a finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use Complainant’s mark or to register the disputed domain names. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain names. There is no evidence that Respondent has been commonly known by the disputed domain names or that it has any rights that might predate Complainant’s adoption and use of its mark.

 

Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain names. Respondent has not used the disputed domain names in connection with the bona fide offering of goods or services.

Instead, the record indicates that Respondent was well aware of Complainant’s mark and used the disputed domain name to point to a malicious website. The website is written in French and is presented as Windows official page that provides a telephone number for technical support. When calling the number, an operator requests that the end user download a software program allowing the operator to access the computer remotely. To do this, the user is provided with a code. Inserting the code then infects the computer or installs a malware/spyware. In addition, Respondent is using the disputed domain name as a parked page which provides links to competitor websites, providing Respondent with pay-per-click advertising revenue as a result of its deception of Internet users seeking Complainant’s authorized websites. Thus, Respondent knowingly adopted Complainant’s mark in the disputed domain names in an effort to create the false impression that Respondent is associated with Complainant or is an authorized representative of Complainant to defraud unsuspecting consumers for Respondent’s personal profit and gain.

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The record indicates that Respondent was well aware of Complainant’s mark when registering and using the disputed domain names. Respondent has already been involved in several prior UDRP disputes with Complainant:

- On March 3, 2020, concerning the domain name , Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundaction Comercio Electronico, WIPO Case No. D2019-3132;
- On April 8, 2020, concerning the domain names and , Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310;
- On August 21, 2020, concerning the domain name , Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundaction Comercio Electronico, WIPO Case No. D2020-1580;
- On November 24, 2020, concerning the domain name , SODEXO v. Carolina Rodrigues, WIPO Case No. D2020-2475;
- On January 29, 2021, concerning the domain name , Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundaction Comercio Electronico, WIPO Case No. D2020-3085;
- On February 14, 2021, concerning the domain name , Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3426;
- On April 12, 2021, concerning the domain names and , SODEXO v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0237;
- On May 14, 2021, concerning the domain name , Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0316;
- On April 6, 2021, concerning the domain name , Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0485;
- On August 11, 2021, concerning the domain name , Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1735.

In all the above cases, the disputed domain names were transferred to Complainant.

Respondent’s use of the disputed domain name to point to a malicious website or page which downloads malware or spyware to the end user’s computer constitutes evidence of bad faith use of the disputed domain name. Respondent’s use of the disputed domain name to attract Internet users to Respondent’s website which displays links to Complainant’s competitors also constitutes evidence of bad faith. Respondent is using the disputed domain name in connection with pay-per-click parking websites for Respondent’s financial gain.

Accordingly, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: December 29, 2021

Full & Egal Universal Law Academy