The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / W S, WIS INC, 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 December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 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 January 4, 2022, 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 January 8, 2022.
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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed Peter Wild as the sole panelist in this matter on February 14, 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 worldwide active company in the field of food services and facility management. The Complainant has a strong list of trademark protection for SODEXO trademarks, such as:
- SODEXO (figurative), International registration No. 964615, registered on January 8, 2008 in International Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, designating numerous jurisdictions worldwide.
- SODEXO, European Union Trade Mark No. 008346462, registered on February 1, 2010 in International Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
The Disputed Domain Name was registered on November 9, 2021, and at the time of filing the Complaint, the Disputed Domain Name was being used in connection with pay-per-click (“PPC”) site, providing links to services which are in or related to the Complainant’s business activities. It also is offered for sale.
5. Parties’ Contentions A. ComplainantThe Complainant asserts to be a well-known provider of food services and facility management, actively promoting and using its SODEXO trademark throughout the world and to own a number of trademarks SODEXO and/or SODEXO (figurative). According to the Complainant, prior UDRP panels held that the SODEXO trademark is well known (see, 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; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman,WIPO Case No. D2020-1281).
The Disputed Domain Name is, according to the Complainant, confusingly similar to the Complainant’s trademark, given the exact reproduction of its trademark, just adding the term “netusa” which is a composition of two non-distinctive terms.
Moreover, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the SODEXO trademark.
The Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Furthermore, there is evidence that the Disputed Domain Name is offered for sale at a price much higher than out-of-pocket cost.
According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.
As to the registration of the Disputed Domain Name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the Disputed Domain Name considering that it has acquired considerable goodwill and renown worldwide. The Complainant also alleges that the Respondent is known for a history of domain name cybersquatting, including against the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established its rights in the SODEXO trademark.
The Panel sees that the Disputed Domain Name reproduces the Complainant’s trademark in its entirety. The addition of the element “netusa” does not prevent a finding of confusing similarity under the Policy as the SODEXO trademark remains clearly recognizable in the Disputed Domain Name. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s established trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsThe Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
There is no reason to believe that the Respondent’s name somehow corresponds with the Disputed Domain Name and the Respondent does not appear to have any trademark rights associated with the term “sodexonetusa”. See VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1596.
The Respondent is not identified in the WhoIs database as “sodexonetusa”. Prior UDRP panels have held that a respondent was not commonly known by a Disputed Domain Name, for example, if not even the WhoIs information was similar to the Disputed Domain Name. There is no evidence in the case file showing that the Respondent may be commonly known as “sodexonetusa”. The Panel therefore finds under paragraph 4(a)(ii) of the Policy that the Respondent is not commonly known by the Disputed Domain Name.
According to the Complainant, the Respondent is not affiliated with nor authorized by the Complainant in any way to use the trademark and there is no other plausible reason for registration of the Disputed Domain Name than to take advantage of the goodwill and reputation associated with the Complainant’s trademark SODEXO.
The Respondent registered the Disputed Domain Name under a privacy shield and did not file any claims or evidence which would support its rights, both of which has been interpreted as an indication of lack of rights or legitimate interests by earlier UDRP panels, see AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Rather, the Respondent, who was revealed to be behind the privacy shield, has a significant history as a cybersquatter, which is a further indication of a lack of rights or legitimate interests.
Based on these facts, the Panel holds that the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, which the Respondent has not rebutted.
Therefore, the Panel decides that the second element of the Policy is met.
C. Registered and Used in Bad FaithGiven the distinctiveness of the Complainant’s trademark and reputation at the time of the registration of the Disputed Domain Name, it is reasonable to infer that the Respondent registered the Disputed Domain Name with full knowledge of the Complainant’s widely-known trademarks, constituting opportunistic bad faith. Also in light of the PPC links to the exact same industry to which the website under the Disputed Domain Name points, the Panel finds it hard to see any other explanation than the Respondent knew the Complainant’s well-known trademark, especially as the website under the Disputed Domain Name shows links to a direct competitor of the Complainant and to other industry related offers. See PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162.
This applies even more in light of the fact that the Complainant’s trademark has repeatedly been held to be well known: see, 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; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman,WIPO Case No. D2020-1281.
The fact that the Respondent used a privacy shield for registration of the Disputed Domain Name and did not file any explanation about how it chose this Disputed Domain Name in good faith, in the circumstances of this case, supports a finding of bad faith, as found by earlier UDRP panels, see BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729; and TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725.
The Respondent has not shown to own any trademark related to the Disputed Domain Name or any similar marks or names. The Respondent’s lack of rights in the Disputed Domain Name is a further indication of bad faith in registering and using it. Where a domain name is so obviously connected to a particular product or service and the Respondent is found to have no connection to that product or service, opportunistic bad faith can be found. See Molmed S.p.A. v. Prof. Asif Ahmed,WIPO Case No. D2001-0177.
Furthermore, the use of the confusingly similar Disputed Domain Name to resolve to a PPC website with links to competitors of the Complainant supports a finding of bad faith.
In addition, the Respondent is offering the Disputed Domain Name for sale for an amount which is clearly beyond the out-of pocket-expenses. This is a further indication of bad faith here. See Group Auchan v. But Tan Dat/Domain ID Shield Service Co. Limited,WIPO Case No. D2016-2020.
Finally, the Respondent is known to have a history of a pattern of cybersquatting, which in itself is a further indication of bad faith, see BHP Billiton Innovation Pty Ltd v. Cameron David Jackson / PrivacyDotLink Customer 2415391 / PrivacyDotLink Customer 2463008,WIPO Case No. D2016-2020.
For these reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) 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
Peter Wild
Sole Panelist
Date: February 28, 2022