The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Liliane Walton, 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 September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 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 September 28, 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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on November 30, 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 was founded in 1966 in France and is one of the largest companies in the world specialized in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. The Complainant is the owner of various trade marks, including: - International device mark registration SODEXO No. 964615, registered on January 8, 2008, designating, among others, the United States; These registrations are hereafter referred to as the “Trade Marks”. The Domain Name was registered on July 20, 2020. The Domain Name resolves to a parking page featuring links in French relating to Cesu (vouchers and cards services) and connecting to websites of competitors of the Complainant. The email address “[…]@sodexous.co” was used for emails sent by a person claiming to be “[…], District Controller, Sodexo Health Care Services”, in an attempt to obtain undue payments. In addition, the email address “[…]@sodexous.co” was used for emails sent by a person claiming to be “[…], Accounting Analyst, Accounts Receivable Sodexo Buffalo Service Center”, also in an attempt to obtain undue payments. 5. Parties’ Contentions A. Complainant According to the Complainant, the Domain Name is composed of the mark SODEXO combined with the letters “us”, which are understood by people as being a reference to the United States, therefore as referring to the activities or projects of the Complainant in the United States. The Complainant submits that the addition of the element “us” in the Domain Name is not sufficient to distinguish it from the Trade Marks. The Complainant contends that according to its knowledge, the Respondent has no rights nor legitimate interests in the Domain Name as it has no rights on SODEXO or SODEXHO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights. The Complainant further states that the Respondent was not commonly known by the Domain Name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO. Moreover, the Complainant submits 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 Domain Name and to use it. According to the Complainant, due to the well-known character and reputation of the Trade Marks, particularly in the United States where the Respondent is located, the Respondent most likely knew of its existence when it registered the Domain Name. The Complainant also contends that the mark SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant. Furthermore, the Complainant submits that the Respondent registered the Domain Name with actual knowledge of the Trade Marks for the purpose of creating confusion with the Trade Marks to mislead third parties for the Respondent’s illegitimate profit. The Complainant points out that the registration and use of the Domain Name to send scam emails in order to mislead third parties and to try to fraudulently get money are solely for the purpose of commercial gain and constitute bad faith registration and use. In addition, the Complainant states that the Respondent is using the Domain Name to exploit the confusion with the Trade Marks to attract Internet users and to incite them to click on third party commercial links, in an intentional attempt to attract, for commercial gain, Internet users to other unrelated websites by creating a likelihood of confusion with the Trade Marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates SODEXO, of which the Trade Marks consist, in its entirety. The addition of the geographical term “us”, referring to the United States, does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284). The country code Top-Level Domain “.co” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. Since the Respondent uses the Domain Name for a parking page containing links to websites of competitors of the Complainant, there is no case of a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Further, the Panel notes that the email addresses connected to the Domain Name have been used for scam emails seeking to extract payments from companies. Such use can never confer rights or legitimate interests on the Respondent (see WIPO Overview 3.0, section 2.13). In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was aware or should have been aware of the Trade Marks, since (i) the Respondent’s registration of the Domain Name occurred almost thirteen years after the registration of the earliest of the Trade Marks; (ii) SODEXO may be deemed a well-known trade mark and has since 2008 been registered in the United States, where the Respondent is located; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks. With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name: (i) the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks; (ii) the use by the Respondent of the Domain Name for a website resolving to a parking page with links to websites of competitors of the Complainant, thereby seeking to benefit from the reputation of the Trade Marks and from confusion with the Trade Marks among Internet users searching for information in relation to the Trade Marks; (iii) the use of email addresses connected to the Domain Name for scam emails seeking to extract payments from companies by creating confusion with the Trade Marks and the Complainant; (iv) the use of a privacy shield service upon the initial registration of the Domain Name; (v) the lack of a Response of the Respondent. Therefore, the Panel concludes that the 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 Wolter Wefers Bettink
- International word mark registration SODEXO No. 1240316, registered on October 23, 2014;
- European Union word mark registration SODEXO No. 008346462, registered on February 1, 2010;
- European Union device mark registration SODEXO No. 006104657 registered on June 27, 2008.
Sole Panelist
Date: December 14, 2020
Full & Egal Universal Law Academy