The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / New World, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2020, 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 24, 2020 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 27, 2020. 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 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 4, 2020. 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 The Complainant is the French limited company Sodexo (previously called Sodexho Alliance), founded in 1966. The Complainant owns, among others, the following trademark registrations: Trademark Registration Number Registration Date Classes Jurisdiction SODEXO (design) 964615 January 8, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 Various countries including the United States SODEXO QUALITY OF LIFE SERVICES (design) 1195702 October 10, 2013 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45 Australia, China, United States SODEXO 1240316 October 22, 2014 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 Iran, Mozambique, United Kingdom SODEXHO (design) 689106 January 28, 1998 16, 36, 37, 39, 41, and 42 Various countries including Denmark, Finland, Germany, Greece, Iceland, Japan, Norway, Sweden SODEXO (design) 006104657 June 27, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 European Union SODEXO & design TMA811527 November 9, 2011 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45 Canada SODEXHO & design TMA654335 December 5, 2005 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45 Canada The Complainant, among others, is the holder of the domain name The disputed domain name was registered on April 13, 2020. The disputed domain name is currently inactive and does not resolve to any website. According to the Complaint, the disputed domain name resolved to a parked website that displayed pay-per-click links to third party websites with alcohol beverages. 5. Parties’ Contentions A. Complainant The Complainant argued the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. That the Complainant was founded in 1966, and that it is one of the largest companies in the world, specializing in foodservices and facilities management, with 470,000 employees, serving 100 million consumers in 67 countries. That the Complainant is one of the largest employers worldwide, which revenues for fiscal year 2019 reached EUR 22 billion, representing by region: 45% North America, 39% Europe, 16% rest of the world. That the Complainant is listed as one of “The World’s Most Admired Companies” by FORTUNE Magazine. That from 1966 to 2008, the Complainant promoted its business under the SODEXHO trademark and trade name. That in 2008, SODEXHO simplified the spelling of its trademark and name to the term SODEXO and changed its logo. That the Complainant provides a wide range of services under its trade name and trademark SODEXO through an offer of on-site services, benefits and reward services, as well as personal and home services. That the trademark SODEXO is used in connection with services related to restaurant and catering, facility management services and workplace services including a wide-range of on-site services such as reception services, technical maintenance and repair, housekeeping, security, laundry, waste management and space management, among others. That, in addition to the above, the trademark SODEXO is used in connection with service vouchers and cards for private and public organizations and childcare, tutoring and adult education, concierge services and home care services for dependent persons. That the Complainant’s group promotes its activities, among others, under the following domain names: That the SODEXO trademark is continuously and extensively used and protected in various classes in 67 countries, including the United States where the Respondent has its domicile. That the Complainant is widely established in various countries, including the United States where the Respondent is located. That the trademarks SODEXHO and SODEXO have a strong reputation and are widely known all over the world. That UDRP panels have already recognized the well-known character of the SODEXHO/SODEXO trademark (and cites Sodexho Alliance v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0287; Sodexo v. Shahzan / PrivacyProtect.org,WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering, CID-300335SOD, CID-512981SOD, Ilker Sirin,WIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc., Jack Sun,WIPO Case No. D2013-2187; Sodexo v. Jack Brabham,WIPO Case No. D2014-1781; Sodexo v. Sodexo Now,WIPO Case No. D2015-0071; Sodexo v. Elena Shaffer,WIPO Case No. D2015-0810; Sodexo v. Li Li,WIPO Case No. D2015-1018, among others). That the term “soddexo” included in the disputed domain name is very similar to the Complainant’s trademark and company name SODEXO. That the only difference between the disputed domain name and the Complainant’s trademark SODEXO comes from the doubling of the consonant “d” in the disputed domain name. That due to the close similarity between the disputed domain name and the Complainant’s trademark SODEXO, the public could undoubtfully believe that the disputed domain name comes from the Complainant’s group or is linked to it. That the Complainant has become aware that the Respondent has registered the disputed domain name and is using it as a parked website connecting to websites in French language, which offer alcoholic beverages. (ii) The Respondent has no rights or legitimate interests in the disputed domain name. That the Respondent has no rights to, nor legitimate interests in the disputed domain name as it has no rights on SODEXO or SODEXHO as corporate name, trade name, trademark or domain name that precede the Complainant’s rights. That the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and trademarks SODEXO and SODEXHO. That the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and that said Respondent 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. (iii) Registration and use in bad faith. That due to the well-known character and reputation of the Complainant’s trademark SODEXO, the Respondent knew about its existence when he registered the disputed domain name. That the Respondent was aware that he had no rights to, or legitimate interests in the disputed domain name. That the Complainant’s trademark SODEXO is purely fanciful, and that nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant. That the Respondent is using the disputed domain name by exploiting the confusion with the well-known trademark SODEXO to attract Internet users and to incite them to click on third-parties’ commercial links. That this is an intentional attempt to attract, for commercial gain, Internet users to websites that compete with the Complainant by creating a likelihood of confusion with the well-known trademark SODEXO. That the unauthorized use and registration of the disputed domain name by the Respondent to attract and redirect Internet users to the Respondent’s parking website are solely for the purpose of achieving commercial gain and constitute bad faith registration and use. That Internet users who have a legitimate interest in the Complainant’s group could have been exposed to these parking services that include advertising links to websites of the Complainant’s competitors. That this conduct can also create a dilution of the Complainant’s trademark SODEXO. That the registration and use of the disputed domain name by the Respondent can harm the goodwill represented by the SODEXO trademark and company name by confusing consumers as well as potential costumers, and by interfering with the Complainant’s business by frustrating attempts of Internet users to reach its official websites. That bad faith may be also deduced from the fact that the disputed domain name was registered through a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (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 view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V.,WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has submitted evidence showing that it owns trademark registrations for SODEXO and SODEXHO in various classes and countries, including the United States where the Respondent appears to be located. The disputed domain name is confusingly similar to the Complainant’s trademark SODEXO, as it incorporates said trademark in its entirety, the only difference being that it features the addition of a letter “d”, which does not constitute an element that differentiates said disputed domain name from the Complainant’s mark, nor prevent a finding of confusing similarity. In fact, the disputed domain name configuration constitutes a case of typosquatting, since it incorporates a common misspelling of the Complainant’s trademark SODEXO (see Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; LinkedIn Corporation v. Daphne Reynolds,WIPO Case No. D2015-1679; Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073. The addition of the country code Top-Level Domain (“ccTLD”) “.co” to the disputed domain name is a technical requirement of the Domain Name System, and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; AB Electrolux v. Abraham Joffe,WIPO Case No. DCO2017-0037). The first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has argued that the Respondent has no rights to, or legitimate interests in the disputed domain name, as it has no rights over the trademark SODEXO. Furthermore, the Complainant has stated that the Respondent is not affiliated or associated to the Complainant, that the latter does not sponsor the former, and that said Respondent has not been authorized, licensed or otherwise permitted to register the disputed domain name and to use it. The Complainant also alleges that the Respondent was not commonly known by the disputed domain name prior to the adoption and use of the corporate name, business name and trademarks SODEXO by the Complainant. None of these affirmations has been challenged by the Respondent. The disputed domain name is currently inactive and does not resolve to any website. Nevertheless, in accordance with the evidence presented by the Complainant, the website to which the disputed domain name resolved displayed pay-per-click sponsored links, related to alcoholic beverages. Such links were related to the following marks, among others: MARTELL, COURVOISIER, XO COGNAC, MARTELL XO, COURVOISIER XO and COURVOISIER VSOP. Those links redirected Internet users to webpages in French language offering alcoholic beverages made available by third parties. The consensus view of previous UDRP panels is that the use of a domain name to resolve to a parked webpage comprising pay-per-click links does not represent a bona fide offering of goods or services, where such links capitalize on the reputation and goodwill of a complainant’s trademark or mislead Internet users (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302). In the present case, the Respondent is not authorized to use the Complainant’s trademark SODEXO. Therefore, the registration of the disputed domain name incorporating the Complainant’s trademark (with a typo) to host links associated with an area of business that are related to the Complainant’s activities (such as services related to restaurants and catering), does not constitute a bona fide offering of goods or services (see section 2.9 of the WIPO Overview 3.0; see also Payoneer, Inc. v. Quinv S.A., Thibault Korchia,WIPO Case No. D2019-2001; G4S Plc v. Domains By Proxy, LLC / VMI INC,WIPO Case No. D2018-2512). The Panel considers that the Respondent has used the disputed domain name with the intent to mislead customers looking for the Complainant and its services, for commercial gain. Such conduct cannot be deemed to have taken place in good faith, and therefore cannot confer any rights or legitimate interests in the disputed domain name (see Abbott Laboratories v. Hola Domains / Hola Dominios Limitada,WIPO Case No. D2017-2463; Mecenat Aktiebolag v. C/O Alpnames Limited / Edouard,WIPO Case No. D2018-1366). In light of the above, the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has 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; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Complainant has established rights over the SODEXO trademark internationally, including in the United States where the Respondent appears to be located. The dates of registration of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name. Furthermore, the Complainant has proven the well-known character of the SODEXO trademark and its association with several services worldwide. Based on the evidence filed by the Complainant, this Panel agrees with previous UDRP panels in the sense that the trademark SODEXO is well-known (see Sodexho Alliance v. LaPorte Holdings,Inc,WIPO Case No. D2005-0287; Sodexo v. Shahzan / PrivacyProtect.org,WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering, CID-300335SOD, CID-512981SOD, Ilker Sirin,WIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc., Jack Sun,WIPO Case No. D2013-2187; Sodexo v. Jack Brabham,WIPO Case No. D2014-1781; Sodexo v. Sodexo Now,WIPO Case No. D2015-0071; Sodexo v. Elena Shaffer,WIPO Case No. D2015-0810; Sodexo v. Li Li,WIPO Case No. D2015-1018). The Respondent’s registration of the disputed domain name, which is confusingly similar to the Complainant’s trademark SODEXO, a mark which, in addition to being well known has an extensive global presence, suggests that the Respondent knew about the Complainant and its trademark SODEXO at the moment of registration. This indicates that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it (see section 3.2.1 of the WIPO Overview 3.0; see also Sanofi v. Domains By Proxy, LLC / John Valley,WIPO Case No. D2018-2575; L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937). Furthermore, and taking into account that the Respondent has put into place a pay-per-click scheme, the Panel considers that the Respondent has used the disputed domain name to divert Internet users, for commercial gain, to the website to which the disputed domain name has resolved, by creating a likelihood of confusion with the Complainant, and to redirect traffic that was originally intended for the Complainant. The Respondent’s conduct clearly shows that he was trying to profit from the Complainant’s reputation and goodwill related to the trademark SODEXO, by making consumers believe that the disputed domain name and the website to which it resolved are somehow related to, sponsored by, affiliated with, or endorsed by the Complainant. This conduct constitutes bad faith according to paragraph 4(b)(iv) of the Policy (see Skyscanner Limited v. Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd,WIPO Case No. D2019-2849; WestJet Airlines Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Axdalinescu,WIPO Case No. D2018-2424). Accordingly, the third element of the Policy has been met. 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 Kiyoshi Tsuru
Sole Panelist
Date: June 18, 2020
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