The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld, Iceland / Morel Nicolas, Belgium.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 November 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 November 23, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 26, 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 BackgroundThe Complainant is a French company founded in 1966 and one of the largest companies in the world specialized in foodservices and facilities with 420,000 employees serving 100 million consumers in 64 countries. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, the Complainant simplified the spelling of its mark and name to SODEXO and changed its logo. The Complainant provides a wide range of services under its trade name and mark SODEXO (prior SODEXHO) through an offer of on-site services, benefit, and reward services as well as personal and home services.
The Complainant owns numerous domain names corresponding to and/or containing the marks SODEXO or SODEXHO. The Complainant promotes its activities among others under the following domain names:
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For its products, the Complainant owns a large portfolio of trademarks. Among them, but not limited to, are the following trademark registrations:
- SODEXO International Trademark registration No. 964615 registered on January 8, 2008;
- SODEXO International Trademark registration No. 1240316 registered on October 23, 2014;
- SODEXHO International Trademark registration No. 689106 registered on January 28, 1998;
- SODEXHO International Trademark registration No. 694302 registered on June 22, 1998;
- SODEXO European Union Trade mark registration No. 008346462 registered on February 1, 2010;
- SODEXO European Union Trade mark registration No. 006104657 registered on June 27, 2008;
- SODEXO International Trademark registration No. 1195702 registered on October 10, 2013;
- SODEXO European Union Trade mark registration No. 011138501 registered on January 22, 2013.
The Complainant is widely established and among other countries, in Belgium where the Respondent is located.
The disputed domain name was registered on September 12, 2021, and resolves to a parking page showing various advertisements.
5. Parties’ Contentions A. ComplainantThe arguments put forward by the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant claims disputed domain name incorporates the SODEXO mark in its entirety, with the addition of the term “be” and the generic Top-Level Domain (“gTLD”). Therefore, due to the identical reproduction of the mark SODEXO, the public will believe that the disputed domain name comes from the Complainant’s group or is linked to it.
On the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the mark SODEXO is not a dictionary word but rather a highly distinctive and well-known mark. However, the Respondent only uses it to create a likelihood of confusion with the Complainant. Also, the Respondent has not been authorized, licensed or permitted by the Complainant to do so.
On the third element of the Policy, the Complainant claims that the Respondent had prior knowledge of the Complainant and its trademark SODEXO and registered the disputed domain name in bad faith. The Respondent is using the domain name SODEXO to attract Internet users and to incite them to click on third party commercial links.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(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.
The Complainant, under the first requirement of paragraph 4(a) (i) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trademark SODEXO. The disputed domain name incorporates the SODEXO mark in its entirety with the addition of the term “be” and the gTLD “.com”. WIPO Overview 3.0, section 1.11.1 reads: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com’”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Therefore, it cannot be used to establish uniqueness.
In many decisions panels have adjudicated that the addition of terms does not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name. See section 1.8 of the WIPO Overview 3.0.
The term “be” can be interpreted as an abbreviation for Belgium and does not prevent the disputed domain name from being confusingly similar to the Complainant’s SODEXO mark, regardless of its interpretation.
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIn order to verify all the claims, regarding Complainant´s trademark rights and the Respondent’s illegitimate interests, the Complainant has to satisfy paragraph 4(a)(ii) of the Policy.
As regards use of a domain name in connection with pay-per-click (“PPC”) parking websites, WIPO Overview 3.0, section 2.9, states: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The Respondent hosts PPC links under the disputed domain name which redirect Internet users to Complainant’s competitor’s websites for CESU (vouchers and cards services for personal & home services) and therefore capitalizes on the reputation and goodwill of the Complainant’s mark.
While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the often‑impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
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. Further to the above, it is apparent that the Respondent uses the confusingly similar disputed domain name for commercial gain, deriving click‑through revenue from the PPC links.
Based on the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimately interests in the disputed domain name which the Respondent has not sufficiently rebutted.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithIn order to prevail under the third element of paragraph 4(a) (iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists several circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
“(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding 4b(iv), section 3.1.4 of the WIPO Overview 3.0 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. [See also generally section 2.5.3. of the WIPO Overview 3.0].”
Panels have previously recognized the reputation and the well-known character of the Complainant's trademark (e.g. Sodexo v.Contact Privacy Inc. Customer 1246780534 / Chivers Michael,WIPO Case No. D2020-0865; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021). The disputed domain name incorporates this well-known trademark entirely. In addition, SODEXO mark has a very high degree of distinctiveness, as it is not a dictionary word. The incorporation of this mark in the disputed domain name cannot therefore have been accidental. Rather, by adding the geographic abbreviation “be” for Belgium to the Complainant’s mark, the Respondent appears to have been aiming at confusion of Internet users, considering the Complainant’s location in neighboring France. Since no legitimate interest of the Respondent could be identified, and considering the nature of the disputed domain name and current commercial use, the Panel cannot conceive of any plausible good-faith use to which the disputed domain name may be put.
At the same time, the Respondent has a commercial gain using PPC links. Commercial gain through the abuse of the likelihood of confusion of a well-known trademark has to be classified as bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a) 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,
Christian Gassauer-Fleissner
Sole Panelist
Date: February 9, 2022