ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Contact Privacy Inc. Customer 0163851749 / Milen Radumilo Case No. D2022-1141 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Contact Privacy Inc. Customer 0163851749, Canada / Milen Radumilo, Romania. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2022. On April 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 1, 2022, 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 April 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 April 9, 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 April 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2022. The Center appointed Rosita Li as the sole panelist in this matter on May 6, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of page 2 Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a French company founded in 1966 and has been in the business of foodservices and facilities management. From 1966 to 2008, the Complainant used the SODEXHO mark and trade name to promote its business. In 2008, the Complainant simplified the spelling of the mark and name to SODEXO. The Complainant owns numerous SODEXO trademark registrations in various jurisdictions, including but not limited to European Union Trade Mark number 006104657, which was registered on June 27, 2008. The Complainant also has an International trademark registration for (registration number 964615), registered on January 8, 2008. The Disputed Domain Name was registered on February 28, 2022. The Complainant submitted that the Disputed Domain Name resolved to a malicious website that was blocked by an antivirus software. 5. Parties' Contentions A. Complainant The Complainant argues that the Disputed Domain Name is identical or confusingly similar to the mark SODEXO in which the Complainant has rights. The Complainant put forward that there is an identical reproduction of the SODEXO mark in the Disputed Domain Name, and the additional "accelerator" word does not alter the fact that the Disputed Domain Name is confusingly similar to the SODEXO mark. The Complainant also claims that the SODEXO mark has a strong reputation and is widely known globally, and the Complainant is widely established in Romania where the Respondent is located. It is also submitted that there are prior UDRP cases recognizing the well-known character of the SODEXO marks. The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant argues that the Respondent has no prior right to use "sodexo" as a corporate name, trade name, shop sign, mark, or domain name. The Complainant also asserts that the Respondent is not commonly known by the Disputed Domain Name, and that the Respondent has no affiliation, association, sponsorship, or connection with the Complainant and has not been authorized, licensed, or otherwise permitted by the Complainant or any subsidiary or affiliated company to register and use the Disputed Domain Name. The Complainant also asserts that the Disputed Domain Name was registered and is being used in bad faith. It is submitted that due to the well-known character and reputation of the SODEXO mark, the Respondent knew of the existence of the SODEXO mark when he registered the Disputed Domain Name and that he has no rights or legitimate interests in it. The use of the Complainant's SODEXO mark for a domain name resolving to a malicious website is also argued by the Complainant as an evidence of bad faith, and such use tarnishes the distinctiveness and reputation of and dilutes the Complainant's marks. The Complainant submits that there are previous UDRP cases deciding the use of a domain name to spread viruses may contribute to prove bad faith (see International Business Machines Corporation v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1279; WK Travel, Inc. v. Li Yuan Feng, WIPO Case No. D2019-1255; and International Business Machines Corporation v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2019-0833). The Complainant also points out that the Respondent was previously involved in two UDRP complaints with the Complainant (see Sodexo v. Super Privacy Service LTD c/o Dynadot / Milen Radumilo, WIPO Case No. D2020-2192; and Sodexo v. Contact Privacy Inc., Customer 0162923862 / Milen Radumilo, WIPO Case No. D2021-4180). page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must satisfy each of the following three elements in a complaint: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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. A. Identical or Confusingly Similar It has been well established that a generic Top-Level Domain, such as ".com", in a disputed domain name does not typically form part of the relevant assessment. The Panel will accordingly consider the second level part of the Disputed Domain Name (i.e. "sodexoaccelerator"). The Complainant demonstrated that it is the proprietor of the trademark SODEXO. As put forward by the Complainant, the Disputed Domain Name incorporates the trademark SODEXO in its entirety. An additional word, such as "accelerator", does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant's SODEXO trademarks. Accordingly, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant's trademarks and the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel notes that the Complainant denied any association, affiliation, or connection with the Respondent, and that the Complainant did not authorize the Respondent to use the trademarks of the Complainant for purposes such as registering the Disputed Domain Name. The Panel also notes that the Complainant provided evidence showing the Disputed Domain Name redirected Internet users to a malicious website prompting a browser safety warning. The Panel considers that such use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name. Having considered all circumstances, the Panel considers that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Accordingly, the Panel is of the view that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith For reasons set out in section 6.B. above, inferences can be drawn against the Respondent that the Disputed Domain Name was registered and had been used in bad faith. page 4 The Complainant has been in business since 1966 and registered the SODEXO mark as early as in 2008. The Panel takes into account that the well-known character of the SODEXO mark has been recognized in prior UDRP decisions (see Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael, WIPO Case No. D2020-0865; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman, WIPO Case No. D2020-1281; SODEXO v. Ashutosh Dwivedi, Food & Beverages, WIPO Case No. D2020-2686; SODEXO v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-0472; Sodexo v. Daniela Ortiz, WIPO Case No. D2021-0628; and SODEXO v. Yang Zhichao ( 杨智超 ), WIPO Case No. D2021-0902). The Panel also takes into account that the Respondent has already been involved in two UDRP proceedings with the Complainant in 2020 and 2021, and the respective panels ordered transfer of the domain names in dispute to the Complainant (see Sodexo v. Super Privacy Service LTD c/o Dynadot / Milen Radumilo, WIPO Case No. D2020-2192; and Sodexo v. Contact Privacy Inc., Customer 0162923862 / Milen Radumilo, WIPO Case No. D2021-4180). In view of the foregoing, and in the absence of any rebuttal from the Respondent, the Panel finds that at the time of the registration of the Disputed Domain Name (i.e. in 2022), the Respondent must have been aware of the existence, goodwill, and reputation of the Complainant and its trademarks. The Panel considers the fact that the Disputed Domain Name redirects to a malicious website attempting to spread malware is clear evidence of bad faith (see International Business Machines Corporation v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1279; WK Travel, Inc. v. Li Yuan Feng, WIPO Case No. D2019-1255; and International Business Machines Corporation v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2019-0833). Having considered all the circumstances, the Panel also considers that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract Internet users to the website or other online locations by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. Accordingly, the Panel is of the view that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Name be transferred to the Complainant. /Rosita Li/ Rosita Li Sole Panelist Date: May 20, 2022
Full & Egal Universal Law Academy