WIPO Domain Name Decision D2023-1894 for soddexo.vip

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. chengao Case No. D2023-1894 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is chengao, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2023. On April 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2023, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2023, 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 May 11, 2023. 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 May 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2023. The Center appointed Delia-Mihaela Belciu as the sole panelist in this matter on June 21, 2023. 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. page 2 4. Factual Background The Complainant is one of the largest companies in the world specializing in foodservices and facilities management with 422,000 employees in 53 countries. The Complainant has a large portfolio of trademarks consisting of "Sodexo", in many countries and territories worldwide, including the following: - the Hong Kong, China trademark for SODEXO No. 300997516, filed on November 21, 2007, registered on May 11, 2009, with invoked priority as of July 16, 2007, for goods and services in classes 09, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - the Hong Kong, China trademark for SODEXO LIVE! No. 305692861, filed on July 21, 2021, registered on December 13, 2021, for goods and services in classes 35, 39, 41, 43, and 45; - the International trademark registration for SODEXO No. 964615, registered on January 8, 2008, with invoked priority as of July 16, 2007, for goods and services in classes 09, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, protected in the several territories; - the International trademark registration for SODEXO No. 1240316, registered on October 23, 2014, for goods and services in classes 09, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, protected in the several territories; - the European Union Trade Mark for SODEXO No. 008346462, filed on June 8, 2009, registered on February 1, 2010, for goods and services in classes 09, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; - the European Union Trade Mark for SODEXO No. 006104657, filed on July 16, 2007, registered on June 27, 2008, for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; - the International trademark registration for SODEXHO No. 689106, registered on January 28, 1998, for goods and services in classes 16, 36, 37, 39, 41 and 42, protected in the several territories; - the International trademark registration for SODEXHO No. 694302, registered on June 22, 1998, with invoked priority as of January 27, 1998, for goods in class 09, protected in the several territories. The disputed domain name was registered on April 21, 2023, and resolved at the time when the Complaint was filed to a web page protected by a password. The web page was incorporating the Complainant's trademark SODEXO LIVE!. At the time of issuance of the Panel's decision the disputed domain name resolved to a parking website. 5. Parties' Contentions A. Complainant The Complainant in essence contends the following: The mark SODEXO has a strong reputation and is widely known all over the world. The disputed domain name corresponds to an obvious misspelling of its SODEXO trademark, the only difference between the signs being the addition of the double consonant "dd" which is melted in the sign. In the Complainant's view, the disputed domain name is almost identical to the SODEXO trademark and company name. The Complainant contends that the Respondent has no rights nor legitimate interests in the disputed domain page 3 name as such is not commonly known by the disputed domain name. Moreover, the Complainant asserts that the Respondent does not have rights on SODEXO corporate name, trade name, shop sign, mark or domain name prior to the Complainant's rights over SODEXO marks. The Complainant further contends that 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 in bad faith because the Complainant's mark SODEXO is purely fanciful and so nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant's activities and mark SODEXO. Moreover, due to well-known character and reputation of the SODEXO / SODEXHO mark, the Respondent knew of its existence when it registered the disputed domain name. The use by the Respondent of the disputed domain name in relation to a web page protected by a password, which was incorporating the Complainant's mark SODEXO LIVE! in order to attract Internet users to a false website looking like an official SODEXO's website for the sole purpose of achieving commercial gain, constitutes bad registration and use. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In order for the Complainant to succeed, it must prove, according to paragraph 4(a) of the Policy, that: (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 with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In case all three elements above have been fulfilled, the Panel is able to grant the remedy requested by the Complainant. Thus, the Panel will deal with each of the requirements in turn. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the Policy, the Complainant has to show that the disputed domain name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights. With respect to the requirement of having rights pursuant to paragraph 4(a)(i) of the Policy, the Complainant owns SODEXO registered trademarks, in several jurisdictions. Consequently, the Panel finds that this requirement is fulfilled. The Panel further finds that the disputed domain name is confusingly similar to the Complainant's SODEXO trademark as such incorporates the SODEXO trademark in its entirety with a small misspelling represented by the double consonant "dd", which does not avoid a finding of confusing similarity. The SODEXO mark remains clearly recognizable within the disputed domain name (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). In what concerns the addition of the generic Top-Level Domain ("gTLD") ".vip", this is not to be taken into consideration when examining the confusing similarity between the Complainant's trademarks and the page 4 disputed domain name, as such is viewed as a standard registration requirement and such is disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see section 2.1 of the WIPO Overview 3.0). In this case, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, as the Respondent has not submitted any response. Based on the available evidence, the Respondent is not commonly known by the disputed domain name and does not appear to have rights on SODEXO denomination prior to the Complainant's rights over SODEXO marks. 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 of the Complainant to register the disputed domain name and to use it. At the time when the Complaint was filed, the disputed domain name resolved to a web page protected by a password which was incorporating the sign SODEXO LIVE! in an identical form with the one registered in the name of the Complainant, which could be viewed to be made in order to attract Internet users to a false website looking like an official website of the Complainant. The use of the disputed domain name for illegal activity e.g. phishing can never confer right or legitimate interest on a respondent. The above does not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name. Additionally, generally speaking, UDRP panels have found that domain names confusingly similar to a complainant's trademark carry a high risk of implied affiliation. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, a complainant must show that the domain name has been registered and is being used in bad faith. In this case, the Complainant's rights to the SODEXO trademark predate the registration date of the disputed domain name. The SODEXO trademark is registered in several jurisdictions and enjoys of significant reputation and wellknown character recognized by earlier UDRP panels as well (see Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580; Sodexo v. Contact Privacy Inc. Customer 1247189803 / NorAm Accounts Receivable, WIPO Case No. D2020-1683; SODEXO v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1762; SODEXO v. Ashutosh Dwivedi, Food & Beverages, WIPO Case No. D2020-2686; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085). page 5 In light of the significant reputation and well-known character of the SODEXO trademarks, it is not conceivable that the Respondent registered the disputed domain name without knowledge of the Complainant's SODEXO trademarks, which support a finding of bad faith registration. The Respondent's incorporation of the Complainant's SODEXO trademark in its entirety in the disputed domain name with a misspelling of the Complainant's trademark represented by the double consonant "dd" and the use of the disputed domain name at the time when the Complaint was filed in relation to a web page protected by a password, which was incorporating the Complainant's mark SODEXO LIVE!, in order to attract Internet users to a false website looking like an official website of the Complainant, all support a finding of bad faith use (see WIPO Overview 3.0, section 3.2.1). The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark. For all these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled. 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. /Delia-Mihaela Belciu/ Delia-Mihaela Belciu Sole Panelist Date: July 5, 2023


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