The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Contact Privacy Inc. Customer 12411280262, Canada / Richard Taylor, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 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 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 the Respondent of the Complaint, and the proceedings commenced on November 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2021.
The Center appointed Anna Carabelli as the sole panelist in this matter on December 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 French company Sodexo (prior called Sodexho Alliance). Founded in 1966, it is one of the largest companies in the world specializing in foodservice and facilities management with 420,000 employees serving 100 million consumers in 64 countries (Annex 5 to the Complaint). The Complainant’s consolidated revenues in 2020 reached 19, 3 billion euros (Annex 3 to the Complaint).
From 1966 to 2008, the Complainant promoted its business under the mark and trade name SODEXHO, which in 2008 was simplified to SOXEXO. The Complainant owns registered trademark rights for the SODEXO word mark and for various combined word and logo marks that incorporate the mark SODEXO in many countries (Annexes 6 to 15 to the Complaint). In particular, it owns the following trademark registrations:
- European trademark registration filed on June 8, 2009 registered under No. 008346462 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- European trademark registration filed on July 16, 2007 registered under No. 006104657, renewed in 2017, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 4;
- European trademark registration filed on August 23, 2012 registered under No. 011138501 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- Canadian trademark registration filed on November 9, 2007 registered under No. TMA811527 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- Canadian trademark registration filed on October 13, 2000 under No. TMA654335 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant owns various domain names corresponding to or including SODEXO and promotes its activities, among others, under the domain names
The disputed domain name was registered on October 12, 2021 and does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts and contends that:
- The disputed domain name is identical to or confusingly similar with the Complainant’s trademark SODEXO, which is entirely incorporated in the dispute domain name with the addition of the suffix CA and the generic TLD “.com”. Since the letters CA are obviously understood as the geographical abbreviation for Canada, the public will believe that the disputed domain name comes from the Complainant’s group or is linked to it.
- The Respondent has no rights or legitimate interests in the disputed domain name.
In this connection the Complainant contends that: (i) the Respondent has no rights on “sodexo” as corporate name, trade name, trademark or domain name that precede the Complainant’s rights; (ii) 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 trademark SODEXO; and (iii) 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 and to use it.
- The disputed domain name was registered and is being used in bad faith.
The Complainant’s trademark SODEXO is purely fanciful and well-known worldwide as previous UDRP decisions already recognized. The unauthorized registration of the disputed domain name by the Respondent and its passive holding are likely in the aim of fraudulent uses and constitute bad faith registration and use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.
A. Identical or Confusingly SimilarThis Panel finds that the Complainant has established rights over the trademark SODEXO based on the trademark registrations cited under section 4 above. Prior UDRP decisions have recognized that the Complainant’s trademark SODEXO is purely fanciful and well-known worldwide (see Sodexho Alliance v. LaPorte Holdings,Inc,WIPO Case No. D2005-0287; Sodexo v. Shahzan – PrivacyProtect.org,WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering, CID-300335SOD, CID-512981SOD, Ilker SirinWIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc., Jack Sun,WIPO Case No. D2013-2187; Sodexo v. Jack Brabham,WIPO Case No. D2014-1781; Sodexo v. Sodexo Now,WIPO Case No. D2015-0071; Sodexo v. Elena Shaffer,WIPO Case No. D2015-0810; Sodexo v. Li Li ,WIPO Case No. D2015-1018). Based on the evidence filed by the Complainant, this Panel agrees on the above.
The disputed domain name consists of the whole of the Complainant’s registered mark SODEXO with the addition of the suffix “CA” and the generic Top-Level Domain “.com”. These minor differences do not distinguish the disputed domain name from Complainant’s mark.
The letters “CA” are generally recognized and understood as the geographical abbreviation for Canada and “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” (see SFDH Associates, L.P. v. John Barry, doing business as Pro-Life domains Not For Sale, aak, Azra Ari Khan,WIPO Case No. D2004-0017).
The addition of the Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (See section 1.11 of the WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”).
Therefore, this Panel finds that that the disputed domain name is confusingly similar with the Complainant’s trademark. As a result, the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate InterestsThe Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark SODEXO. The Complainant asserts that the Respondent has no rights on “sodexo” as corporate name, trade name, trademark or domain name that precede the Complainant’s rights, and was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name and trademarks SODEXO. In addition, the Respondent cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name, which does not resolve to an active website. According to the Complainant, the Respondent’s passive holding is likely for fraudulent activities.
This Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1). By not submitting a Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Therefore, this Panel finds that the Complaint also succeeds under 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 establish that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name incorporates the SODEXO mark. Given the distinctiveness and well-established reputation of the Complainant’s trademark, it is not conceivable that the Respondent did not have in mind it when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant.
As regards bad faith use, the disputed domain name does not resolve to an active website. The Complainant alleges to fear a possible fraudulent use of the disputed domain name but provides no evidence in this regard.
As stressed by many UDRP decisions (see section 3.3 of the WIPO Overview 3.0) “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying these factors, to the circumstances of this case: (i) the Complainant’s mark is distinctive and well-established and the Respondent knew or should have known it when registering the disputed domain name; (ii) the Respondent has failed to submit a response to the Complaint or provide any evidence of good-faith use; (iii) the Respondent has taken steps to conceal its identity through use of a privacy service; and (iv) having regard to the repute of the Complainant’s trade mark, it is impossible to think of any good faith use to which the disputed domain name could be put by the Respondent.
The Respondent’s passive holding of the disputed domain name therefore has the characteristics which are associated with bad faith registration and use, as set out at section 3.3 of the WIPO Overview 3.0 and in the decisions of other panels.
This Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith and the Complainant has established element 4(a)(iii) of the Policy.
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 name,
Anna Carabelli
Sole Panelist
Date: December 31, 2021