The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”).
The disputed domain names <livelibysodexo.com> and <sodexobebefitscenter.com> (each a “Disputed Domain Name” and collectively the “Disputed Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2020.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 31, 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 is one of the largest companies in the world specializing in food services and facilities management, serving 100 million consumers across 72 countries.
The Complainant is the owner of numerous trade mark registrations for the SODEXO and SODEXHO word and device marks in various jurisdictions, including, inter alia, the SODEXO trade mark, International registration no. 964615, registered on January 8, 2008, covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 protected in several countries including the United States.
The Complainant also owns and operates various domain names corresponding to and/or containing the words SODEXO or SODEXHO. These domain names include but are not limited to <sodexo.com>, <sodexobenefits.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexho.fr>, and <sodexho.com>.
The Respondent registered the Disputed Domain Names <livelibysodexo.com> on October 10, 2019 and <sodexobebefitscenter.com> on September 12, 2019.
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Names are identical or confusingly similar to the Complainant’s registered trade mark SODEXO, which has been wholly incorporated into the Disputed Domain Names;
(b) the Respondent was not commonly known by the Disputed Domain Names and the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use its SODEXO or SODEXHO trade marks, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Names; and
(c) the reputation and uniqueness of the Complainant’s SODEXO and SODEXHO trade marks, particularly in the United States, combined with the fact that the Disputed Domain Name <livelibysodexo.com> was registered by the Respondent on the same day that the Complainant had filed an European Union (“EU”) trade mark for LIVELI BY SODEXO and that the Disputed Domain Name <sodexobebefitscenter.com> resolves to a parking page comprising pay-per-click links to various websites which purport to compete with the Complainant’s business, support the fact that the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name 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 by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the SODEXO and SODEXHO trade marks, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain (“TLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name <sodexobebefitscenter.com> incorporates the Complainant’s SODEXO mark in its entirety with the addition of the words “bebefits”, a typographic variation of the word “benefits”, and “center”. UDRP panels have consistently found that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel agrees with the Complainant that the mere addition of these words does not prevent a finding of confusing similarity between the Disputed Domain Name <sodexobebefitscenter.com> and the Complainant’s trade mark.
The Disputed Domain Name <livelibysodexo.com> incorporates the Complainant’s SODEXO mark in its entirety with the addition of the words “liveli” and “by”. Similarly, the Panel agrees with the Complainant that the addition of these words does not prevent a finding of confusing similarity between the Disputed Domain Name <livelibysodexo.com> and the Complainant’s trade mark.
The Panel therefore finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s SODEXO trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the SODEXO mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the SODEXO mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Disputed Domain Name <sodexobebefitscenter.com> resolves to a parking page comprising pay-per-click links to various websites which purport to compete with the Complainant’s business. This suggests that the Respondent is using the Disputed Domain Name <sodexobebefitscenter.com> to capitalise on the reputation and goodwill of the Complainant’s trade mark.
The Disputed Domain Name <livelibysodexo.com> does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name <livelibysodexo.com> in accordance with a bona fide offering of goods or services or for noncommercial or fair use purposes.
There is no evidence to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Names, or that it has become known by the Dispute Domain Names. Further, no evidence has been provided to suggest that the Disputed Domain Names have been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
It is generally recognized that passive holding of a domain name does not as such prevent a finding of bad faith use. As stated in “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 (“[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity”). See section 3.3 of the WIPO Overview 3.0.
In this case, the Panel finds that the use of the Disputed Domain Names by the Respondent amounts to bad faith use and registration due to the following:
(i) the Complainant’s SODEXO mark is well-known. A quick Internet search shows that the top search results returned for SODEXO are the Complainant’s official website and various affiliated pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been fully aware of the Complainant when registering the Disputed Domain Names;
(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Names;
(iii) the Respondent registered the Disputed Domain Names using a privacy shield to conceal his identity in the WhoIs records;
(v) the Respondent had registered the Disputed Domain Name <livelibysodexo.com> on the same day that the Complainant had filed an EU trade mark for LIVELI BY SODEXO and then made that Disputed Domain Name available for sale to the general public, which suggests that the Respondent had registered that Disputed Domain Name primarily for sale to the Complainant or a third party for valuable consideration in excess of its costs; and
(vi) the Disputed Domain Name <sodexobebefitscenter.com> resolves to a parking page comprising pay-per-click links to various websites which purport to compete with the Complainant’s business, which suggests an intentional attempt by the Respondent to attract, for commercial gain, Internet users to the websites of the Complainant’s competitors by creating confusion with the Complainant’s SODEXO mark.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 Names <livelibysodexo.com> and <sodexobebefitscenter.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: February 14, 2020