Complainant is SODEXO of Issy-Lesmoulineaux, France, represented by Areopage, France.
Respondent is Nihat Bahçe, FN Market / Nihat BAHCE, fnmarket of Istanbul, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Isoroku Yamamoto, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2015. On February 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. The Response was filed with the Center on March 5, 2015.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 16, 2015. 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 Background
Complainant is a French company founded in 1966. It is one of the largest food services and facilities management companies in the world, with employees in 80 countries. For fiscal year 2013, revenues reached EUR 18 billion euros.
From 1966 to 2008, SODEXHO promoted its business under the SODEXHO mark and trade name. In 2008, SODEXHO simplified the spelling of its mark and name to SODEXO (the “SODEXO Mark” or the “Mark”). SODEXO provides a wide range of services under its mark, for example, through on-site services (e.g., restaurant and catering) as well as personal and home services (e.g., childcare, tutoring and adult education, concierge services).
The SODEXO mark is registered and used around the world including Turkey where Respondent is located. For example, Complainant owns International Trademark Registration Number 964615 having a registration date of January 8, 2008 and protected in over 25 jurisdictions including the United States of America and Turkey. Complainant also owns European Community Trade Mark Registration Number 008346462 having a registration date of February 1, 2010. And Complainant has two Turkish Trademark Registrations, Numbers 204535 and 201804, having registration dates of December 8, 1999 and September 20, 1999, respectively.
The Domain Name was registered Friday, January 30, 2015. It resolves to an inactive site. On the following Monday, February 2, 2015, Respondent sent an email to Sodexo Avantaj, the Turkish subsidiary of Sodexo. The English translation provided in the annex of the Complaint reads:
“Dear Authority,
S domain has belonged to me for a while. I am wondering whether to sell this generic domain. So, I would like to propose to you, if you are interested in this domain, you can send your proposal to my […]@hotmail.vom adress. I am retailing and exporting sextoys products. If you aren’t interested in this domain, I will consider it for an e-commerce website for sextoy products. Thanks in advance.” 5. Parties’ Contentions A. Complainant
Complainant alleges that if the Domain Name becomes active, the public will be led to believe that it is linked to the SODEXO group. And if Respondent uses the Domain Name for online sales of sex toys, this will tarnish the SODEXO brand and be detrimental to Complainant.
Complainant further claims that Respondent has no rights nor legitimate interests in the Domain Name as it has no rights in SODEXHO and SODEXO as a corporate name, trade name, shop sign, mark or domain name that predate Complainant’s rights. Respondent was not commonly known by the Domain Name before Complainant adopted and used the Mark. Moreover, Respondent does not have any affiliation, association, sponsorship or connection with Complainant and has not been authorized, licensed or otherwise permitted by Complainant or by any subsidiary or affiliated company to register or use the Domain Name.
On February 2, 2015, Sodexo Avantaj, the Turkish subsidiary of Sodexo, received an email from Respondent. In his email, Respondent mentions that he registered the Domain Name and that he wants to sell it to Sodexo Avantaj. Respondent threatened Complainant’s subsidiary to use the Domain Name for sex toys e-commerce if Sodexo Avantaj does not buy the Domain Name. Respondent registered the Domain Name to negotiate its sale for compensation. Thus, Respondent is aware of Complainant’s worldwide rights in the Mark and he wants to take advantage of them to get money for the Mark. Because Respondent is asking for an offer, there is no direct evidence that the sale or transfer in question would be for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name. However, due to Respondent’s behavior, there is no doubt that his intention when offering the Domain Name for sale was to make profit and to obtain valuable consideration in excess of documented out-of-pocket costs.
The Complainant claims this as blackmail and intended to put pressure on Complainant’s subsidiary to buy the Domain Name to avoid any possible use in connection with sex toys that would tarnish Complainant’s reputation. B. Respondent
Respondent represents that he is an entrepreneur who has owned for many years marketing websites for different e-commerce sectors. He owns a company where he claims to sell products according to his country’s rules and regulations and he states that he is a lawful taxpayer. Respondent states that he did not blackmail Complainant and that was not his intention. He argues that he offered information regarding the Domain Name he purchased and he only asked Complainant if they would be interested in using the Domain Name. Respondent alleges that he did not ask for money to sell the Domain Name. Respondent alleges that he has the right to use the Domain Name as an e-commerce seller, if Complainant is not interested in using it and asks: “Why can’t a buyer of the Domain Name have a right to use it or offer it to Complainant to use it. Why this name would be for sale anyway?”
Respondent argues that there are thousands of manufacturers, companies, retailers, and wholesalers in the world that work in the sex-toy industry and the he and thousands of people make their living from this industry so he objects to Complainant’s attack. Respondent suggests that an examination of the name “sodexo” will show that there are four letters that match with sextoy, which means out of 6 letters, four of the letters are directly related to his business. Respondent also suggests that “sodexo” sounds similar to sextoy when pronounced. Respondent claims that he purchased the Domain Name because it was available for purchase and questions that if it was important to Complainant, why it did not acquire the Domain Name first. 6. Discussion and Findings A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its SODEXO Mark long before Respondent registered the Domain Name this year. These rights were established by Complainant’s long-term use and by virtue of the various trademark registrations mentioned earlier.
The Domain Name consists of Complainant’s SODEXO Mark in its entirety. It is an accepted principle that the addition of suffixes such as “.cc”, being a country code Top-Level Domain, is typically not a distinguishing factor. Consequently, the Panel finds that the Domain Name is identical to Complainant’s Mark.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name insofar as it has not used SODEXHO or SODEXO (e.g., as a corporate name, trade name, mark or domain name) before Complainant established its rights in the Mark, nor was Respondent ever commonly known by the Domain Name. Complainant further alleges that Respondent does not have any affiliation, association, sponsorship or connection with Complainant and that neither Complainant nor any subsidiary or affiliated company has authorized, licensed or otherwise permitted Respondent to register or use the Domain Name. Respondent has not controverted these allegations.
In response Respondent claims that he “believe[s] that he ha[s] all the right to use the [D]omain [N]ame as an e-commerce seller, if the Complainant is not interested in using it.” He asks:“Why this name would be for sale anyway?” Respondent argues that in examining “sodexo”, there are four letters that match the word “sextoy”, which means that out of 6 letters, four of the letters are directly related to his business. He also argues that “sodexo” sounds similar to “sextoy” when pronounced. The Panel is not persuaded by Respondent’s assertions and finds that this commentary is not evidence that rebuts the prima facie case of no rights or legitimate interests set forth by Complainant.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s long-standing rights in the SODEXO Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Mark worldwide. The evidence leads to the conclusion that Respondent knew of Complainant and its rights in the Mark when it registered the Domain Name insofar as: the Domain Name is identical to Complainant’s well-known Mark, Respondent has no rights or legitimate interests in the Domain Name, and Respondent contacted Complainant’s Turkish subsidiary on February 2, 2015 just a few days after he registered the Domain Name on January 30, 2015 to solicit a “proposal” from Complainant regarding the Domain Name that is identical to Complainant’s Mark.
One of the bases for bad faith use under 4(a)(iii) of the Policy is circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Policy, paragraph 4(b)(i).
Respondent claims that he only “offered to the complainant information regarding the domain name I purchased” and that “[i]f and when you get a chance to review my e-mail to the complainant, you also will realize that I didn’t ask for money to sell the domain name. I only asked them if they would be interested in using the subject domain name.” The Panel finds that Respondent did more than merely offer Complainant information regarding the Domain Name or the opportunity to use the Domain Name. The first line of Respondent’s email indicates that he was contemplating selling the Domain Name (“I am wondering whether to sell this generic domain.”). He in fact contacted Complainant for that purpose, though instead of making an explicit offer to sell the Domain Name he thought that by soliciting a proposal from Complainant it would not appear as if he were selling the Domain Name. If all Respondent wanted was his out-of-pocket costs in return for transferring the Domain Name, he could have put that in the email—he did not. Instead, Respondent said that he wanted to sell the Domain Name and then he solicited a proposal to do so. Furthermore, in lieu of requesting a sum certain for the Domain Name, Respondent pegged the “valuable consideration” it sought by informing Complainant that he is “retailing and exporting sextoys products. If you aren’t interested in this domain, I will consider it for an e-commerce website for sextoy products.” In essence the valuable consideration that Respondent sought was based on the value (how much Complainant would pay) of not having Complainant’s Mark tarnished or business diverted by the use of the Domain Name on a site relating to sex toys. Under the language of the Policy the circumstances indeed indicate that Respondent registered the Domain Name primarily for the purpose of “selling, renting, or otherwise transferring” it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs.
Furthermore, Respondent states: “I have offered [Complainant] the privilege to own the domain name if they decide to use it for their benefit.” Respondent’s bad faith also results from what amounts to a threat to use the Domain Name in a way that would disadvantage Complainant: for the online sales of sex toys. That is, Respondent intended to put pressure on Complainant’s subsidiary to buy the Domain Name to avoid any possible use of it in connection with sex toys, which would tarnish Complainant’s reputation.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: March 21, 2015
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