The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN, Japan / Moto Sato, Personal, Japan.
The disputed domain name <sodexoa.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 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 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 17, 2020.
On June 16, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On June 17, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment.
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 in English and Japanese of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020.
The Center appointed Douglas Clark as the sole panelist in this matter on August 7, 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.
The Complainant, SODEXO, is a French Company specialized in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. Its consolidated revenues reached EUR 22 billion for fiscal year 2019. The Complainant is a multinational company that has establishment in Japan.
The Complainant has promoted its business under the SODEXHO mark and trade name from 1966 to 2008. It has simplified the spelling of its mark and trade name from SODEXHO to SODEXO and changed its logo from to in 2008. The SODEXHO and SODEXO marks are used on a range of daily life on-site services, benefit and reward services as well as personal and home services. The Complainant is the owner of various SODEXHO and SODEXO marks worldwide, including the relevant international trademark No. 964615 registered on January 8, 2008 which, inter alia, designates Japan in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; international trademark No. 689106 registered on January 28, 1998 which, inter alia, designates Japan in classes 16, 36, 37, 39, 41 and 42 and international trademark No. 694302 registered on June 22, 1998 which, inter alia, designates Japan in class 9.
The Complainant owns a range of domain names incorporating the SODEXHO and SODEXO marks, including <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, <sodexho.com>, etc.
The Respondent is the registrant of the disputed domain name <sodexoa.com>.
The disputed domain name was registered on March 9, 2020 and resolves to a sinkhole server at the date of this decision. According to the evidence provided by the Complainant, the disputed domain name previously resolved to a website that triggers a pop-up window from the AVAST antivirus software which alerts the connection to a malicious website in French language.
Identical or confusingly similar
The Complainant contends that the disputed domain name <sodexoa.com> is almost identical to the SODEXO mark and company name, and the only difference between is the addition of the final vowel “a” at the end of the disputed domain name. Such difference corresponds to an obvious misspelling of the SODEXO mark which can be made by an Internet user and is characteristic of typosquatting practice intended to create confusing similarity between the Complainant's mark and disputed domain name. The public could undoubtfully believe that the disputed domain name comes from the SODEXO group or is linked to SODEXO.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the SODEXO/SODEXHO corporate name, business name and marks.
The Complainant claims 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 disputed domain name and to use it.
Registered and used in bad faith
The Complainant asserts that, due to the well-known character and reputation of the SODEXO and SODEXHO marks, particularly in Japan where the Respondent is located, the Respondent most likely knew its existence when registered the disputed domain name and knew that he had no rights or legitimate interests in the disputed domain name. The Complainant contends that the word SODEXO is purely fanciful and nobody could choose this word or any variation thereof, unless seeking to create an association with the Complainant.
The Complainant claims that the use of the Complainant’s trademark SODEXO for a domain name to point to a malicious website or page constitutes evidence of bad faith use of the disputed domain name. Such use tarnishes the distinctiveness and reputation of the Complainant’s SODEXO and SODEXHO marks, and demonstrates the Respondent’s bad faith.
The Complainant contends that Internet users who have a legitimate interest in SODEXO products and services could have been then exposed to a malicious website linked to the disputed domain name. This may not only be confusing and disturbing for the consumers, but this can also create a dilution of the SODEXO and SODEXHO marks. The unauthorized use and registration of the disputed domain name by the Respondent to attract and redirect Internet users to a malicious website is necessarily for the purpose of harming and/or achieving commercial gain and then constitute bad faith registration and use.
The Complainants points out that it has also been established that the Respondent’s failure to do a trademark search before registering the domain name, may also contribute to prove bad faith.
The Complainant contends that bad faith may be also deduced from the fact that the disputed domain name was anonymously registered.
The Respondent did not reply to the Complainant’s contentions.
The Language of the Registration Agreement is Japanese.
The Complainant requested the language of the proceeding be in English on the grounds that the Complainant is not able to communicate in Japanese while submitting all documents in Japanese would unduly delay the proceeding and incur substantial expenses for translation. Moreover, the disputed domain name is registered in Latin script, rather than Japanese characters.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel would have accepted a Response in Japanese, but none was filed. The above circumstances lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
The Panel finds the disputed domain name <sodexoa.com> is confusingly similar to the Complainant’s SODEXO mark because the disputed domain name incorporates the trademark SODEXO in full, followed by the letter “a”. The disputed domain name is also similar to the SODEXHO mark because the first five letters of the word SODEXHO are incorporated into the disputed domain name. The Complainant’s SODEXHO and SODEXO marks are clearly recognizable in the disputed domain name. The additional letter “a” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s SODEXHO and SODEXO marks. The generic Top-Level Domain “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The disputed domain name was registered way after the Complainant had registered and used the SODEXO and SODEXHO marks. The Panel is satisfied that the Respondent must have known the Complainant’s well-known SODEXO and SODEXHO marks when it registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name in order to create an association with the Complainant as a means of attracting users to the resolved website. Moreover, the Complainant has provided evidence that the Respondent is using the disputed domain name to point to a page connecting to a malicious site.
Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s marks in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <sodexoa.com> be transferred to the Complainant.
Date: August 25, 2020
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