Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Guy GLUCHE, France.
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 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 Complainant on October 26, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Center received four emails from the email address of the technical contact for the disputed domain name as disclosed in the Registrar’s verification response on October 26, 2021, October 29, 2021, November 8, 2021, and December 1, 2021, respectively. The Center notified the Parties that it would proceed to the panel appointment process on December 27, 2021.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 11, 2022. 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 BackgroundComplainant is Sodexo, a company specialized in foodservices and facilities management.
Complainant owns trademark rights in the SODEXO sign, and notably through the following registrations:
- European Union word trademark n°008346462 SODEXO dated of June 8, 2009 and renewed, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- European Union semi-figurative trademark n°006104657 SODEXO dated of July 16, 2007 and renewed, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- French semi-figurative trademark n°3513766 SODEXO dated of July 16, 2007 and renewed, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- International semi-figurative trademark n°964615 SODEXO dated of January 8, 2008 and renewed, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
Respondent owns the disputed domain name
First, Complainant argues that the disputed domain name is confusingly similar to its widely-known SODEXO and SODEXHO trademarks.
Complainant also claims rights on numerous domain names containing the trademark SODEXO or SODEXHO, but does not provide evidence of said rights.
Complainant underlines being the owner of numerous trademarks, and being established in France where Respondent is located. Complainant asserts that its SODEXO and SODEXHO trademarks have already been considered as well-known in previous UDRP decisions.
Complainant asserts that the addition of the term “ltd” in the disputed domain name does not neutralize the similarity with Complainant’s trademarks, as it is widely admitted that the addition of generic or descriptive terms to a trademark will not alter the fact that the domain name is confusingly similar to said trademark; “ltd” being understood to mean “Limited Company”, the sign SODEXO keeps its individuality and is perceived by consumers as the predominant part of the disputed domain name. Complainant argues that “Sodexo Ltd” may then refer to Sodexo’s official website.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant underlines that Respondent was not commonly known by the disputed domain name prior to the adoption and use by Complainant of the corporate name, business name and trademarks SODEXO and/or SODEXHO.
Complainant claims that it has not granted any license nor authorization to Respondent to register the disputed domain name and that there was no relationship of any kind between Complainant and Respondent.
Finally, Complainant asserts that Respondent registered and uses the disputed domain name in bad faith.
Regarding bad faith registration, Complainant states that the sign SODEXO is purely fanciful, and therefore considers that Respondent’s choice of this word or any variation thereof means seeking to create an association with Complainant’s activities and trademarks SODEXO.
Relying on the well-known character of its SODEXO and SODEXHO trademarks, Complainant argues that Respondent could not have ignored Complainant’s rights at the time of registration of the disputed domain name. Complainant refers to previous UDRP decisions that already recognized that actual knowledge of a complainant’s trademarks and activities at the time of the registration of the disputed domain name may be considered an inference of bad faith registration, among which:
- Sodexo v. Shahzan / PrivacyProtect.org,WIPO Case No. D2013-1308;
- Accor, So Luxury HMC v. Youness Itsmail,WIPO Case No. D2015-0287.
As a result, Complainant concludes that the disputed domain name was registered with actual knowledge of Complainant’s rights in the SODEXO trademarks, very likely for the purpose of creating confusion with Complainant’s trademark to divert or mislead third parties for Respondent’s illegitimate profit.
Regarding bad faith use, Complainant argues that even if the disputed domain name - which has been recently created - does not presently have any active content, a passive holding of a domain name does not prevent a finding of bad faith, quoting Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Novo Nordisk A/S v. CDMS Invest,WIPO Case No. D2012-0676.
Complainant further asserts that Panels have among others taken into consideration the strong reputation and well-known character of Complainant’s trademarks, the lack of evidence provided by Respondent of any good faith use with regard to the disputed domain name, and the identity of the disputed domain name with Complainant’s name and trademark, intended to divert or mislead potential web users from Complainant’s website they are actually trying to visit. Complainant claims these circumstances may apply to the present case.
Finally, Complainant considers that bad faith use may also result from the threat of an abusive use of the disputed domain name by Respondent, as was the case in Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564.
Complainant concludes that the unauthorized registration of the disputed domain name by Respondent, as well as its passive holding, likely in the aim of fraudulent uses, are for the purpose of commercial gain and then constitute bad faith registration and use.
B. RespondentRespondent did not reply to Complainant’s contentions, and is therefore in default.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
A. Identical or Confusingly SimilarComplainant has shown rights in the SODEXO trademark, in France and abroad. Therefore, the Panel considers that the trademarks rights of Complainant in the sign SODEXO are established.
Complainant underlines that the disputed domain name is composed of its SODEXO trademark identically and the term “ltd” standing for “Limited Company”.
This is usually considered sufficient to establish that a disputed domain name is confusingly similar to a complainant’s trademarks as soon as the disputed domain name incorporates complainant’s trademark in its entirety, along with a term and the generic Top-Level Domains (“gTLD”) extension. It is clear that the part of the disputed domain name consisting of Complainant’s trademark is the dominant feature of the disputed domain name, being clearly recognizable. This is sufficient to establish that the disputed domain name is confusingly similar to Complainant’s trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, and Compagnie Générale des Etablissements Michelin v. Zhichao, WIPO Case No. D2020-1886).
In that view, the Panel considers the addition of the term “ltd” and of the gTLD “.com” to be irrelevant in the assessment of the confusing similarity between Complainant’s SODEXO trademark and the disputed domain name.
The Panel agrees and finds the disputed domain name to be confusingly similar to Complainant’s trademark.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsPrevious Panels have continuously held that under the Policy, a complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See WIPO Overview 3.0, section 2.1, and Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio,WIPO Case No. D2020-2200).
Complainant argues that Respondent was not authorized in any way to register the disputed domain name and that there was no relationship of any kind between Complainant and Respondent.
Long-standing case law has considered these circumstances to be sufficient to make a prima facie case that respondent lacks rights or interests in the disputed domain name: “The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Complainant has authorized or licensed the Respondent to use its LINKLATERS trademark and the Complainant has made out a prima facie case to that effect, which then places the burden on the Respondent, which it has failed to satisfy” (see Linklaters LLP v. WhoisGuard Protected / Cindy Smith, WIPO Case No. D2019-0941).
Moreover, Complainant claims that Respondent was not commonly known by the disputed domain name prior to Complainant’s adoption and use of the SODEXO sign. This is a long-standing criterion to assess whether Respondent has right or interest in the disputed domain name.
On the basis of the information given by Complainant and in the absence of a response, the Panel considers that Respondent was not related in any way to Complainant.
As a result, the Panel finds that Complainant has made a prima facie case showing Respondent’s lack of rights to or legitimate interest in the disputed domain name. The disputed domain name is not being used and the Respondent has failed to respond, thereby failing to rebut the prima facie case established by Complainant.
Therefore, the Panel finds that Complainant has satisfied Policy 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant underlines that the term SODEXO is purely fanciful and therefore, choosing this word or any variation thereof would mean seeking to create an association with Complainant’s activities and SODEXO trademarks. Additionally, relying on the well-known character of its SODEXO trademarks, Complainant argues that Respondent could not have ignored Complainant’s rights at the time of registration.
Previous UDRP Panels have already recognized the wide reputation of the SODEXO trademark: “The Panel agrees with previous UDRP panels holding that the fanciful trademark SODEXO enjoys a wide reputation. Therefore, the Panel agrees with the fact 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. Registration Private, Domains By Proxy, LLC / Ilan Sigura,WIPO Case No. D2021-2898).
The Panel agrees and considers that the well-known character of the SODEXO trademarks is established.
Previous UDRP Panels have found that such situation shows that “Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name” (see Carrefour SA v. WhoisGuard, Inc. / Jes Madsen,WIPO Case No. D2020-0902 and WIPO Overview 3.0, section 3.2.2). Furthermore, noting that Complainant is a French limit company and the added term “ltd” is descriptive of “limited company”, the Panel finds the construction of the disputed domain name suggestive of Respondent’s awareness of Complainant and Respondent’s intent to target and cause confusion.
As a result, the Panel finds that the disputed domain name was registered in bad faith.
Complainant further argues that even if the domain name is currently inactive, such passive holding of the disputed domain name by Respondent amounts to use in bad faith.
The Panel notes that the domain name currently directs toward the hosting provider’s default page, which can be considered as inactive and thus as passive holding of the domain name (see Compagnie Générale des Etablissements Michelin v. IP Perekrestok Avtomarket, WIPO Case No. D2018-0953).
According to previous Panel decisions, such passive holding may indeed amount to bad faith use in certain circumstances (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: “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”. The particular circumstances of this case which lead to a conclusion of bad faith use are:
- Complainant’s trademark has a strong reputation and is widely known throughout the world, as evidenced by numerous registrations worldwide and Complainant’s evidence of its reputation and size;
- Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use;
- Respondent’s failure to respond to Complainant’s amicable settlement proposal in the course of the present proceedings is additional evidence of bad faith (see ACCOR v. Digi Real Estate Foundation, WIPO Case No. D2006-0651).
In light of the above, the Panel finds that the disputed domain name is also being used in bad faith.
As a result, the Panel finds that Complainant has satisfied 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
Nathalie Dreyfus
Sole Panelist
Date: January 25, 2022