ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. SLA Accounting Department, xtoenergyfund Case No. D2024-1581 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is SLA Accounting Department, xtoenergyfund, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2024. On April 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2024, 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 (Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2024, 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 25, 2024. 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 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2024. The Center appointed Steven A. Maier as the sole panelist in this matter on June 5, 2024. 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 a limited company registered in France. It is a provider of food services and facilities management. The Complainant is the owner of numerous registrations in territories around the world for the trademark SODEXO. Those registrations include, for example: - European Union trademark registration number 008346462 for the word mark SODEXO, registered on February 1, 2010, in numerous International Classes; and - International trademark registration number 3722463 for a combined mark SODEXO, registered on December 8, 2009, in numerous International Classes and designating the United States. The Complainant operates websites at uniform resource locators (“URLs”) including “www.sodexo.com”. The disputed domain name was registered on April 9, 2024. The Complainant exhibits evidence that the disputed domain name has resolved to a “parking page” website containing what appear to be pay-per-click (“PPC”) links to third-party goods or services. 5. Parties’ Contentions A. Complainant The Complainant submits that it was founded in 1966 and is now one of the world’s largest companies in its field, with 430,000 employees serving 80 million customers daily in 45 countries. The Complainant claims revenue of EUR 22.6 billion in 2023, of which 46% was attributable to North America. The Complainant provides further evidence of its corporate profile and the reputation of its SODEXO trademark, including media coverage and awards. The Complainant submits that its trademark has been found to have attained the status of a “well-known” trademark in previous proceedings under the UDRP, including for example Sodexo v. Domains by Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085. The Complainant submits that the disputed domain name is confusingly similar to its SODEXO trademark. It contends that the letter “d” in its trademark is replaced with the letters “cl” in the disputed domain name, which is visually highly similar. The Complainant submits that the disputed domain name is a deliberate misspelling of its trademark and amounts to “typosquatting”. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondent and has never authorized it to use its SODEXO trademark, that the Respondent has not commonly been known by the disputed domain name and that the Respondent is not making any bona fide commercial use of the disputed domain name. It states that the Respondent’s use of the disputed domain name does not give rise to any rights or legitimate interests, since SODEXO is an invented term and not a dictionary word and the Respondent cannot lawfully use it for the purpose of PPC links. The Complainant submits that, in any event, the PPC links include third-party providers of employee benefit services which are competitors of the Complainant. The Complainant submits that the disputed domain name has been registered and is being used in bad faith. It states that its trademark SODEXO is fanciful and distinctive and that nobody could choose to adopt that trademark other than to misrepresent a connection with the Complainant’s services. The Complainant contends that to register a domain name which incorporates a well-known third-party trademark amounts in itself to bad-faith conduct. The Complainant submits, moreover, that the Respondent has used the confusion
page 3 it has created with the SODEXO trademark to attract Internet users to its website, and to click on third-party PPC links which include links to the Complainant’s competitors. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are 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. A. Identical or Confusingly Similar The Complainant has established that it is the owner of registered trademark rights in the mark SODEXO. As observed in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for confusing similarity: “… typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name… In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.” In this case, the Panel finds that the disputed domain name is identical to the Complainant’s trademark SODEXO, but for the substitution of the letters “cl” in the disputed domain name for the letter “d” in the trademark. The Panel accepts the Complainant’s submission that this substitution produces a result that is visually highly similar to the Complainant’s trademark, and finds therefore that the Complainant’s trademark is recognizable within the disputed domain name upon a side-by-side comparison. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Respondent has used the disputed domain name for the purpose of a parking page including PPC links. While a domain name which comprises a dictionary word may in some circumstances be used for the purpose of PPC links which relate to that dictionary meaning, and does not target any third-party trademark rights, that is not the situation in this case. The Panel finds that the Complainant’s trademark SODEXO is a
page 4 distinctive, invented term and that neither that trademark, nor any term “soclexo”, constitutes a dictionary word. The Panel finds further that the Respondent has used the disputed domain name to cause confusion with, and thereby target, the Complainant’s trademark. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds the Complainant’s trademark to be distinctive and widely known, and to have been found by previous panels under the UDRP to have the status of a “well-known” trademark. The Respondent has provided no explanation for its choice of the disputed domain name, which the Panel accepts is highly visually similar to the Complainant’s SODEXO trademark. The Panel infers in the circumstances that the Respondent registered the disputed domain name with the Complainant’s SODEXO trademark in mind, and with the intention of “typosquatting” or otherwise causing confusion between the disputed domain name and that trademark. The Panel finds further that the Respondent has used the disputed domain name to resolve to PPC links, from which it must be assumed to have derived revenue, including links to competitors of the Complainant. The Panel finds the disputed domain name to be inherently misleading, and to have been created and used deliberately to confuse Internet users looking for the Complainant or its services. The Panel finds therefore that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith. 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. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: June 19, 2024
Full & Egal Universal Law Academy