WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domain Privacy, Above.com Domain Privacy

Case No. D2020-2936

1. The Parties

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

The Respondent is Domain Privacy, Above.com Domain Privacy, Australia.

2. The Domain Name and Registrar

The disputed domain name <sodexo365.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for theDisputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 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 November 9, 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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2020.

The Center appointed Colin T. O’Brien as the sole panelist in this matter on December 18, 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 is one of the largest companies in the world specializing in foodservice and facilities management, with 470 000 employees serving 100 million consumers in 67 countries. In 2019, the Complainant had consolidated revenues of 22 billion euros.

The Complainant provides a wide range of services under its trade name and trademark SODEXO including restaurant and catering services; facility management services and workplace services; reception services, technical maintenance and repair, housekeeping, security, laundry, waste management, space management; providing service vouchers and cards for private and public organizations in connection with employee benefits, incentives, public subsidies; personal and home services including childcare, tutoring and adult education.

The Complainant owns the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.

The Complainant owns numerous trademark registrations for its SODEXO and Design marks including International Trademark Registration No. 1195702 registered on October 10, 2013 for the mark SODEXO QUALITY OF LIFE SERVICES and International Trademark Registration No. 964615 registered on January 2, 2008 for the mark SODEXO, which cover Australia, and Australian Trademark Registration No. 755152 for the mark SODEXHO which was filed on February 16, 1998 and registered on December 10, 199 and covers classes 09, 16, 36, 37, 39, 41, 42.

The Complainant offers services in Australia and has a website for its specific Australian services located at “https://au.sodexo.com/home.html”.

The disputed domain name was registered on November 2, 2020, and resolves to a parking page displaying links related to the Complainant’s competitors and other websites.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name incorporated the SODEXO trademark and the number “365”. “365” is understood by people as being a reference to the number of days in the year. The addition of the element “365” in the Disputed Domain Name is not sufficient to distinguish it from the Complainant’s marks.

Due to the identical reproduction of the SODEXO mark, the public will believe that the Disputed Domain Name comes from the SODEXO group or is linked to SODEXO.

The Respondent is using the Disputed Domain Name to resolve to a parking page (in French) connecting to the Complainant’s competitor’s websites for providing meals in the workplaces.

The Respondent has no rights nor legitimate interests in the Disputed Domain Name <sodexo365.com> as it has no rights on SODEXO or SODEXHO as corporate name, trade name, shop sign, mark or domain names that would be prior to the Complainant’s rights.

The Respondent was not commonly known by the Disputed Domain Name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO / SODEXHO.

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 concerned Disputed Domain Nameand to use it.

Due to the well-known character and reputation of the mark SODEXO including in Australia the Respondent most likely knew its existence when the Disputed Domain Name was registered and knew that he had no rights or legitimate interests in the Disputed Domain Name.

The word SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.

Previous decisions issued under the UDRP recognize actual knowledge of a complainant’s trademarks and activities at the time of the registration of domain names may be considered an inference of bad faith:

The Respondent is using the Disputed Domain Name to exploit the confusion with the well-known mark SODEXO to attract Internet users and to incite them to click on third commercial links.

The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Complainant’s competitors websites by creating a likelihood of confusion with the well-known mark SODEXO.

The unauthorized use and registration of the Disputed Domain Name by the Respondent to attract and redirect Internet users to websites of the Complainant’s competitors are solely for the purpose of achieving commercial gain and then constitute bad faith registration and use.

Internet users who have a legitimate interest in SODEXO could have been then exposed to these parking services proposing advertising links to websites of the Complainant’s competitors. This may not only be confusing for the consumers, but this can also create a dilution of the mark SODEXO.

The registration and use of the Disputed Domain Name by the Respondent can harm the goodwill represented by the SODEXO mark and company name by confusing consumers as well as potential consumers and interfering with the Complainant’s business by frustrating attempts by Internet users to reach SODEXO official websites.

Bad faith may be also deducted from the fact that the Disputed Domain Name was anonymously registered.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the SODEXO trademark throughout the world. The addition of the descriptive term “365” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).

Accordingly, the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not been commonly known by the Disputed Domain Name. The fact that the Respondent obtained the Disputed Domain Name years after the Complainant had begun using the globally famous SODEXO mark indicates that the Respondent sought to obtain piggy-back on the SODEXO mark.

After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name rather the evidence suggests that it was either registered to make an undue profit based on the Complainant’s rights (See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556) or to possibly infect Internet users computers with malware (See e.g. Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., WIPO Case No. D2015-2140).

In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered many years after the Complainant first registered and used its famous SODEXO mark. The evidence provided by the Complainant makes it clear the Respondent undoubtedly knew of the Complainant’s SODEXO mark and knew that it had no rights or legitimate interests in the Disputed Domain Name. There is no benign reason for the Respondent to have registered a domain name that is virtually identical to the Complainant’s famous name and mark.

Further, the use of the Disputed Domain Name by the Respondent is clearly in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location. The Complainant has submitted evidence that the Respondent has used the Disputed Domain Name in order to direct Internet users to third party websites which offer goods which compete with the Complainant. The Panel has attempted to visit the website at the Disputed Domain Name but is unable to due to a virus located at <sodexo365.com>. Given the fame of the Complainant’s SODEXO mark, the obvious inference is that the Respondent hoped to trick either customers or employees of the Complainant to visit the website at the Disputed Domain Name to either direct Internet users to a competitor’s website or to place a virus on Internet users computers for nefarious means. This is a textbook example of bad faith use on the part of the Respondent.

The Panel finds that the only plausible basis for registering and using the Disputed Domain Name has been for illegitimate and bad faith purposes.

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, <sodexo365.com>, be transferred to the Complainant.

Colin T. O’Brien
Sole Panelist
Date: January 2, 2021