Complainant is Sodexo, France, represented by Areopage, France.
Respondent is Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 2021, 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 email communications to Complainant on May 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 15, 2021. 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 16, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on June 20, 2021. 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 was founded in 1966 and is a French company known as Sodexo (previously called Sodexho Alliance). Complainant is one of the largest companies in the world specialized in food services and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. Complainant is one of the largest employers in the world. For fiscal year 2019, Complainant’s consolidated revenues reached 22 billion euros which represent by region: 45% North America, 39% Europe and 16% rest of the world. Complainant is listed as one of “The World’s Most Admired Companies” by Fortune Magazine. From 1966 to 2008, Complainant promoted its business under the SODEXHO mark and trade name. In 2008, Complainant simplified the spelling of it mark and name to SODEXO and made a similar change in its logo. Complainant provides a wide range of services under the SODEXO mark, offering onsite services, benefit and reward services, as well as personal and home services. Complainant uses the SODEXO mark in connection with the following activities intended to improve the quality of daily life as shown in Complainant’s website: (1) on-site services relating to restaurant and catering; (2) benefits and reward services including the issuance of vouchers and cards; and (3) personal and home services including childcare, tutoring and adult education. Complainant owns numerous domain names using “Sodexo”. Complainant promotes its activities under the following domain names, among others: The SODEXO mark has been used continuously and extensively and is protected in 67 countries: SODEXO, International trademark registration No. 964615 registered on January 8, 2008 under priority of French trademark registration No. 073513766 of July 16, 2007 renewed in 2018, in international classes 9, 16, 35, 36, and etc., and protected in more than 30 countries; SODEXO, International trademark registration No. 1240316 registered on October 23, 2014 in international classes 9, 16, 35, 36, and etc., and protected in three countries; and SODEXO, European Union trademark registration No. 008346462 filed on June 8, 2009, and registered on February 1, 2010 in international classes 9, 16, 35, 36, and etc. The Disputed Domain Name was registered on November 5, 2020. The Disputed Domain Name resolves to a page connecting to a malicious site: 5. Parties’ Contentions A. Complainant Complainant contends that it has rights in the SODEXO mark and that the Disputed Domain Name is confusingly similar to the SODEXO mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that it has rights in the SODEXO mark, as evidenced by its trademark registrations. Complainant further contends that the Disputed Domain Name is composed of the SODEXO mark and the English words “benefits” and “center” which are internationally understood by consumers. The words are descriptive and such variation in the Disputed Domain Name is not sufficient to distinguish it from the SODEXO mark. On the contrary, the risk of confusion or association with the SODEXO mark is stronger because Complainant offers “benefits and reward services”. Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Complainant further alleges that the Disputed Domain Name resolves to a website in French which has malware. Complainant further alleges that only its antivirus software protected it from contracting a computer virus. Complainant further alleges that Respondent is not commonly known by Sodexo and has no permission from Complainant to use the SODEXO mark. Complainant contends that Respondent has registered and used the Disputed Domain Name in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. Complainant further contends that the SODEXO mark is well known throughout the world, including Nigeria where Respondent lives. Complainant further contends that Respondent had actual knowledge of the SODEXO mark when it registered the Disputed Domain Name, which actual knowledge is an indication of bad faith. Complainant contends that directing Internet users to a malicious website is designed to tarnish the SODEXO mark and to harm Complainant. Complainant further contends that by tarnishing the SODEXO mark and harming Complainant, Respondent has commercially benefitted. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: (i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SODEXO mark which Complainant has rights; and Complainant contends that it has rights in the SODEXO mark and that the Disputed Domain Name is confusingly similar to the SODEXO mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that it has rights in the SODEXO mark, as evidenced by its trademark registrations. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the SODEXO mark. Respondent has not challenged these trademark registrations. The Panel finds that for purposes of this proceeding, Complainant has enforceable rights in the SODEXO mark. Complainant contends that the Disputed Domain Name is composed of the SODEXO mark and the English words “benefits” and “center” which are internationally understood by consumers. The addition of the words does not prevent a finding of confusing similarity between the Disputed Domain Name and the SODEXO mark. Further, the Panel notes that Complainant offer “benefits and reward services”. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see Section 1.8 of the WIPO Overview 3.0 which instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that Top-Level Domains (“TLDs”) such as “.co” may be disregarded for purposes of assessing confusing similarity. The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your [Respondent’s] use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you [Respondent] have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 SODEXO mark. Complainant alleges that the Disputed Domain Name resolves to a website in French which has malware. Complainant further alleges that only its antivirus software protected it from contracting a computer virus. Complainant further alleges that Respondent is not commonly known by Sodexo and has no permission from Complainant to use the SODEXO mark. The Panel finds that directing Internet users to a website with malware cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not contested these allegations. Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the SODEXO mark or to a competitor of Complainant, for valuable consideration in excess of your [Respondent’s] documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the SODEXO mark from reflecting the mark in a corresponding domain name, provided that you [Respondent] have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent’s] website or other online location, by creating a likelihood of confusion with the SODEXO mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent’s] website or location or of a product. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Complainant contends that the SODEXO mark is well known throughout the world, including Nigeria where Respondent lives. Complainant further contends that Respondent had actual knowledge of the SODEXO mark when it registered the Disputed Domain Name. The Panel also notes that the additional term “benefits center” in the Disputed Domain Name refers to Complainant’s business. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Complainant contends that directing Internet users to a malicious website is designed to tarnish the SODEXO mark and to harm Complainant. Complainant further contends that by tarnishing the SODEXO mark and harming Complainant, Respondent has commercially benefitted. The Panel finds that the use of a domain name for directing Internet users to a malicious website constitutes bad faith (see section 3.4 of the WIPO Overview 3.0). In addition, Respondent had actual knowledge of Complainant’s rights in the SODEXO mark when registering the disputed domain name. Therefore, Complainant has met the requirements of 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 Disputed Domain Name Richard W. Page
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: July 4, 2021
Full & Egal Universal Law Academy