The Complainant is Sodexo of Issy-les-Moulineaux, France, represented by Aréopage, France.
The Respondent is Mohammad Ali Mokhtari of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2017. On February 28, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 1, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on March 1, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2017. On March 18, 2017, the Respondent requested an extension to file its Response, which was granted by the Center. On March 20, 2017 the Center informed the Parties that the due date for Response was April 12, 2017. On April 12, 2017, the Respondent requested a further extension to file its Response, which was not granted by the Center. The Response was filed with the Center on April 13, 2017.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on May 5, 2017. 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 Sodexo (previously called Sodexho Alliance) is a French company founded in 1966. It is one of the largest food services and facilities management companies in the world, serving millions of consumers in many countries worldwide.
The Complainant is the owner of the international trademark registration No. 964615 SODEXO registered on January 8, 2008 under priority of the French trademark registration No. 073513766 of July, 16, 2007 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant also owns the Iranian trademark registration SODEXHO, No. 112223 filed on August 8, 2003 and renewed in 2013 in international classes 36, 37 and 43 and also the European trademark SODEXO filed on June 8, 2009 and registered on February 1, 2010 under No. 008346462 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, among other registrations.
In addition, the Complainant owns several domain names through which it promotes its activities, such as: , , , , and .
The disputed domain name was registered on July 26, 2012.
On the basis of a screenshot attached to the Complaint reading "Adresse introuvable", the Complainant asserts that the disputed domain name is inactive. However, the Panel notes that the disputed domain name now hosts a site with a text written – presumably – in Persian.
The Respondent has registered several domain names composed of famous marks, which were the subject of irDRP decisions, all decided in favor of the respective complainants. 5. Parties' Contentions A. Complainant
The Complainant asserts (i) that the disputed domain name is identical or confusingly similar to the marks SODEXO and SODEXHO in which the Complainant has rights; (ii) that the Respondent has no rights of legitimate interests in respect of the disputed domain name; and (iii) that the Respondent has registered and uses the disputed domain name in bad faith.
The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of its corporate name, business name and marks SODEXO and/or SODEXHO.
Furthermore, 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 disputed domain name or to use it.
The word "sodexo" is purely fanciful and nobody could legitimately choose this word unless seeking to create an association with the Complainant.
Bad faith registration and use can be also deduced from the fact that this is not the first time the Respondent is involved in a domain name dispute. Indeed the Respondent has been previously involved in four cases of domain name disputes under the irDRP and in all of such cases the transfer of the domain names registered by the Respondent to the complainants was ordered.
The Complainant's representative, on February 20, 2017, sent the Respondent a letter by email requesting the transfer of the disputed domain name to the Complainant, but the Respondent did not reply.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Panel has reviewed the Respondent's submission and notes that the arguments made in the Respondent's late Response are in most part unfounded, if not irrelevant to the case and hardly understandable. Thus, the Panel has decided not to admit the late Response filed by the Respondent on April 13, 2017. However, for completeness, the Panel notes that even if the Panel would have considered the Respondent's submission, it would have had no bearing on the outcome of the case under the present circumstances. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark 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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel considers that under the Policy the disputed domain name is identical or confusingly similar to the trademarks SODEXO and SODEXHO in which the Complainant has rights.
The Complainant's trademark SODEXO is totally included in the disputed domain name.
Following what has become the consensus view among Uniform Dispute Resolution Policy ("UDRP")1 panels in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2, the Panel shall disregard the country-code Top-Level Domain suffix ".ir" under the confusing similarity test.
Therefore, the disputed domain name is identical to the SODEXO mark and the Complainant has succeeded on the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a) of the Policy, it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden production shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in order to refute the prima facie case.
Noting in particular the Complainant's submission that the disputed domain name has been registered by the Respondent to attempt to create a non-existent association with the Complainant, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the burden of production has been shifted to the Respondent, who did not prove any of the circumstances mentioned paragraph 4(c) of the Policy nor any other, in reply to the Complainant's contentions and has not made a showing of rights or legitimate interests in the disputed domain name. The Panel finds that the website put up by the Respondent after this proceeding commenced was pretextual and incapable of demonstrating any rights or legitimate interests of the Respondent.
Based on the record, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name, and thus the Complainant has succeeded on the second element of paragraph 4(a) of the Policy. C. Registered or Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered or is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant is a well-known French company which operates worldwide and has filed relevant evidence showing that it owns trademark registrations for SODEXO and SODEXHO in many countries, including Iran, which predates the registration of the disputed domain name.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the Complainant's business and trademarks SODEXO and SODEXHO before registering the disputed domain name, which evidences bad faith registration.
There is a "principle established in previous UDRP decisions that the registration of a domain name incorporating a widely-recognized or well-known trademark by someone who has no connection whatsoever with the trademark is a clear indication of bad faith". (Sodexo v. Shahzan / PrivacyP,WIPO Case No. D2013-1308).
Bad faith can also be derived from the lack of response to the letter sent to the Respondent on behalf of the Complainant by its representatives requesting the transfer of the disputed domain name.
Furthermore, bad faith registration and use can be also deduced from the fact that this is not the first time the Respondent has been involved in a domain name dispute. Indeed, the Respondent has registered several domain names composed of famous marks, which were the subject of irDRP decisions, all in favor of the respective complainants, including, Accor v. Mohammad Ali Mokhtari,WIPO Case No. DIR2016-0004; Petróleo Brasileiro S.A. – Petrobras v. Mohammad Ali Mokhtari,WIPO Case No. DIR2013-0004; Amundi v. Mohammad Ali Mokhatari,WIPO Case No. DIR2015-0010 and Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhatari,WIPO Case No. DIR2010-0007.
In view of the foregoing the Panel finds that the most probable explanation is that the Respondent registered the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, especially given that the disputed domain name is identical to the Complainant's mark.
For such reasons, the Panel finds that the Respondent registered the disputed domain name in bad faith and that the Complainant has therefore made out the third element of paragraph 4(a) 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 be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: May 16, 2017
1 Given the similarities between the irDRP and the UDRP, the Panel refers to UDRP jurisprudence throughout the decision where instructive.
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