WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SODEXO v. Contact Privacy Inc. Customer 1247250125 / NorAm Accounts Receivable

Case No. D2020-1524

1. The Parties

The Complainant is SODEXO, France, represented by Areopage, France.

The Respondent is Contact Privacy Inc. Customer 1247250125, Canada / NorAm Accounts Receivable, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sodẹxo.com> [xn--sodxo-p51b.com] is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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 June 16, 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 June 19, 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 June 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2020.

The Center appointed Cherise Valles as the sole panelist in this matter on July 23, 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 specializing in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. For the fiscal year 2019, the Complainant’s consolidated revenues reached EUR 22 billion. It is an established company in Canada.

From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, it simplified the spelling of its mark and name to SODEXO.

The Complainant provides a wide range of services under its SODEXO trade mark through an offer of on-site services (relating to restaurant and catering services, facility management services, and workplace services), benefit and reward services (including vouchers and cards), and personal and home services (including childcare, tutoring and adult education, concierge services, and home care).

The Complainant owns a number of trademarks in jurisdictions around the world for the term SODEXO and SODEXHO, including the following:

- International trademark No. 964615 for the SODEXO logo, registered on January 8, 2008, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- International trademark No. 1240316 for SODEXO, registered on October 23, 2014, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- International trademark No. 689106 for the SODEXHO logo, registered on January 28, 1998, in classes 16, 36, 37, 39, 41, and 42;

- International trademark No. 694302 for the SODEXHO logo, registered on June 22, 1998, in class 9;

- European Union Trade Mark No. 008346462 for SODEXO, registered on February 1, 2020, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- European Union Trade Mark No. 006104657 for the SODEXO logo, registered on June 27, 2008, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- Canadian trademark No. TMA811527 for the SODEXO logo, registered on November 9, 2011, in classes 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45; and

- Canadian trademark No. TMA654335 for the SODEXO logo, registered on December 5, 2005, in classes 9, 16, 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45.

The Complainant also owns and operates numerous domain names incorporating the terms SODEXO and SODEXHO, including <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.

The disputed domain name was registered on May 26, 2020. It does not currently resolve to an active website. The disputed domain name is an Internationalized Domain Name (“IDN”) represented as <sodẹxo.com> with a point under the “e”, using a Punycode transcription it may be represented as <xn--sodxo-p51b.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered trademarks SODEXO and SODEXHO, in light of the fact that it is virtually identical to the Complainant’s SODEXO and SODEXHO marks.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent did not file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for the trademarks SODEXO and SODEXHO, and the SODEXO and SODEXHO logos, as indicated in Section 4 above. Previous UDRP panels have recognized that the Complainant has established rights in the trademarks SODEXO and SODEXHO. See, e.g., Sodexo v. Shahzan – PrivacyProtect.org, WIPO Case No. D2013-1308, Sodexo v. Sodexho Catering, WIPO Case No. D2013-1950, and Sodexo v. Larry Johnson, Arvato Global Group, WIPO Case No. D2019-1773.

The disputed domain name is almost identical to the Complainant’s SODEXO mark. The only differences between the Complainant’s SODEXO mark and the disputed domain name are (i) there is a point under the central letter “e” in the term “sodexo”, and, (ii) the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The IDN letter “ẹ” constitutes an obvious misspelling of the Complainant’s SODEXO mark that could be made by an Internet user and is characteristic of typosquatting practice intended to create confusing similarity between the Complainant’s SODEXO mark and the disputed domain name.

In addition, the disputed domain name is almost identical to the Complainant’s SODEXHO mark, differing only in the replacement of the letter “e” with the IDN letter “ẹ” and the removal of the letter “h”. The latter minor difference in spelling does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Previous UDRP panels have held that the gLTD “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied this prima facie burden. In the absence of a Response or assertion that any such rights or legitimate interests exists, this must lead to a presumption that the Respondent is unable to show that such rights or legitimate interests exist.

The Complainant asserts that the Respondent is not commonly known under the name “sodẹxo” or “sodẹxo.com”. The term “sodexo” is not descriptive in any way and, to the best of the Complainant’s knowledge, the Respondent does not make use of a business name which includes the term “sodexo”, nor has the Respondent registered any trademarks incorporating this term. Moreover, there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name.

There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Given the Respondent’s non-use of the website to which the disputed domain name resolves, the Panel concludes that the Respondent is likely deliberately seeking to confuse Internet users who arrive at the website to which the disputed domain name resolves by seeking to cause them to believe such website is the Complainant’s website or is associated with the Complainant’s website.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(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;

(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.

Previous UDRP panels have noted that the term “sodexo” is a coined and invented term used in 80 different jurisdictions. See, e.g., Sodexo v. Wis Inc., WIPO Case No. D2019-2185. The Respondent cannot claim not to have had knowledge of the Complainant’s SODEXO or SODEXHO marks at the time of registration of the disputed domain name. It seems likely that the Respondent knew of the Complainant and its trademarks when registering the disputed domain name. Previous UDRP panels have held that actual knowledge of a complainant’s trademarks and activities at the time of the registration of the disputed domain names may be considered an inference of bad faith. See, e.g.,LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, Sodexo v. Shahzan - PrivacyProtect.org, WIPO Case No. D2013-1308. Additionally, if the Respondent failed to carry out a trademark search prior to registration of the disputed domain name, that may also contribute to prove bad faith (see, e.g., Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287).

Previous UDRP panels have found that a domain name that differs from the Complainant’s SODEXO mark only by a difference of one letter was taking advantage of the well-known character of the Complainant’s SODEXO mark to attract consumers to a website, which redirects them automatically to other websites of financial interest to the Respondent. See Sodexo v. Li Li., WIPO Case No. D2015-1018.

The website to which the dispute domain name resolves is currently inactive. Previous UDRP panels have held that passive holding of a domain name does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the totality of the circumstances in this case, including, inter alia, the reputation of the Complainant’s trademark and lack of response, supports a finding of bad faith, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.3.

UDRP panels may also find bad faith use as a result of the threat of an abusive use of a disputed domain name at issue by the respondent. See, e.g., Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564. Although the disputed domain name resolves to an inactive website currently, it may be used for fraudulent activities in the future, which poses a concern to the Complainant.

The disputed domain name has been registered using a privacy service. Whilst the Panel accepts that there are recognized legitimate uses of privacy and proxy registration services (as supported by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.6), UDRP panels may draw negative inferences when circumstances indicate that the proxy service has been used in order to frustrate proceedings such as this. On these facts, given the Respondent’s non-use of the disputed domain name the Panel concludes that the Respondent’s choice to use a proxy service is more likely than not to allow them to hide their true identity.

Furthermore, the difference between the term “sodẹxo” found in the disputed domain name and the well-known trademark SODEXO, a point under the central letter “e”, is so small that it may easily go unnoticed by Internet users, and Internet users would likely believe that the disputed domain name is owned by, or linked to, the Complainant when that is not the case. Such choice of domain name, absent explanation from the Respondent, supports a finding of bad faith in the circumstances of this case.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <sodẹxo.com> [xn--sodxo-p51b.com] be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: August 6, 2020