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”) / Milen Radumilo, Romania.
The disputed domain name <sodexo.pro> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21 and 24, 2020, the Registrar transmitted by email to the Center its verification responses 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 August 24, 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 August 28, 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 August 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2020.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 24, 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 has submitted evidence that it is the owner of a large number of trademark registrations for SODEXHO and SODEXO in numerous jurisdictions, including the following:
SODEXO, International Trademark (device) with registration number 964615, registered on January 8, 2008, under priority of the French trademark registration number 073513766 of July 16, 2007, renewed in 2018, for international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
SODEXO, International Trademark (word) with registration number 1240316, registered on October 23, 2014, for international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
SODEXHO, International Trademark (device) with registration number 689106, registered on January 28, 1998, based on the French trademark registration number 96654774 of December 10, 1996, renewed in 2018, for international classes 16, 36, 37, 39, 41 and 42.
SODEXHO, International Trademark (device) with registration number 694302, registered on June 22, 1998, under priority of the French trademark registration number 98714920 of January 27, 1998, renewed in 2018, for international class 9.
SODEXO, European Union Trade Mark (“EUTM”) (word) with registration number 008346462, filed on June 8, 2009, renewed in 2019, for international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
SODEXO, EUTM (device) with registration number 006104657, filed on July 16, 2007, renewed in 2017, for international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The disputed domain name <sodexo.pro> was registered by the Respondent on May 23, 2020. According to the Complainant, the disputed domain name is being used to redirect Internet users to a malicious website.
The Complainant was founded in 1966 and is one of the largest companies in the world specialized in food services and facilities management with over 470,000 employees serving 100 million consumers in 67 countries. The consolidated revenues reached EUR 22 billion for the fiscal year 2019. The Complainant is listed as one of “The world’s Most Admired Companies” by Fortune Magazine.
From 1966 to 2008, the Complainant promoted its business under the SODEXHO trademark. In 2008, the Complainant simplified the spelling of the trademark to SODEXO and updated the logo. The Complainant provides a wide range of services under its SODEXO trademark through an offer of on-site services, benefit and reward services as well as personal and home services. The SODEXO and SODEXHO trademarks are used and protected in 67 countries, including Romania where the Respondent is located. The SODEXO and SODEXHO trademarks have a strong reputation and are widely known all over the world. In addition, the Complainant owns numerous domain names corresponding to and/or containing the trademarks SODEXO and SODEXHO including the domain name <sodexo.ro>.
Given that the disputed domain name <sodexo.pro> is identical to the SODEXO trademark, the public will believe that it comes from the Sodexo group or is linked to the Complainant. The disputed domain name redirects to a malicious website that appears to spread viruses.
To the best of the Complainant’s knowledge, the Respondent has no rights nor legitimate interests in the disputed domain name <sodexo.pro> as it has no rights to Sodexọ as corporate name, trade name, shop sign or trademark. The Respondent is not commonly known by the disputed domain name. Moreover, 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 or use the disputed domain name.
The SODEXO trademark is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and trademark. Due to the well-known character and reputation of the Complainant’s trademark, the Respondent undoubtfully knew of its existence when it registered the identical disputed domain name <sodexo.pro>. The use of the Complainant’s trademark SODEXO for a domain name pointing to a malicious website constitutes bad faith use. The Complainant believes that the Respondent’s use of the disputed domain name tarnishes the distinctiveness and reputation of the Complainant’s trademarks and demonstrates bad faith.
Internet users who have a legitimate interest in the Complainant’s products and services risk being exposed to the malicious website to which the disputed domain name resolves. The Respondent’s use of the disputed domain name may not only be confusing and disturbing for consumers, but can also create a dilution of the Complainant’s trademarks. The unauthorized use and registration of the disputed domain name to attract and redirect Internet users to a malicious website constitutes bad faith registration and use. Previous UDRP panels have found that the use of a domain name for spreading viruses, may contribute to prove bad faith.
It is not the first time that the Respondent is involved in a domain name dispute as the Respondent has a well-documented history of registering domain names containing third party trademarks. In fact, the Respondent has previously been involved in a domain name dispute with the Complainant regarding the domain name <sodexo2018.com>. See SODEXO v. Perfect Privacy, LLC, Network Solutions, LLC (USA) / Milen Radumilo (Romania), WIPO Case No. D2019-2100.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant is, according to the submitted evidence, the owner of the registered trademark SODEXO. The disputed domain name <sodexo.pro> incorporates the Complainant’s trademark in its entirety. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for SODEXO predate the Respondent’s registration of the disputed domain name <sodexo.pro>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the SODEXO trademark in the disputed domain name.
There is no evidence in the case file indicating that the Respondent has used or made any preparations to use the disputed domain name <sodexo.pro> in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the Complainant has submitted evidence that the Respondent is using the disputed domain name to redirect Internet users to a website containing malicious virus.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted 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 trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
As previously mentioned, the Complainant’s trademark registrations for SODEXO and SODEXHO predate the registration of the disputed domain name <sodexo.pro>. The Panel notes that the Complainant’s trademarks are considered well known according to a large number of prior UDRP decisions cited by the Complainant. See for example Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287; Sodexo v. Shahzan / PrivacyProtect.org, WIPO Case No. D2013-1308; Sodexo v. Sodexho Catering, CID-300335SOD, CID-512981SOD, Illker Sirin, WIPO Case No. D2013-1950; Sodexo v. DomainJet, Inc.,Jack Sun, WIPO Case No. D2013-2187; Sodexo v. Wis INC., WIPO Case No. D2019-2185.
The Respondent’s website, to which the disputed domain name resolves, contains a potential malicious virus. In this regard, the WIPO Overview 3.0, section 3.4 states: “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.” The Respondent’s use of the disputed domain name described above may be damaging to the goodwill and reputation associated with the Complainant’s trademark if Internet users falsely believes that the Respondent’s website is associated with or endorsed by the Complainant.
Furthermore, the Complainant has submitted evidence demonstrating that the Respondent has a history of registering domain names in order to prevent trademark owners from reflecting their respective trademarks in corresponding domain names. The Respondent has been involved in a number of UDRP proceedings. See, for example, Vente-Privee.com IP S.à.r.l. v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-1381; Compagnie Générale des Etablissements Michelin v. Contact Privacy Inc. Customer 0156357741 / Milen Radumilo, WIPO Case No. D2020-1277; Carrefour SA v. Milen Radumilo, WIPO Case No. D2020-1107; Compagnie Générale des Etablissements Michelin v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-0834; Teva Pharmaceutical Industries Limited v. Milen Radumilo, WIPO Case No. D2020-0658; Koninklijke Douwe Egberts B.V. v. Contact Privacy Inc. Customer 0156358211 / Milen Radumilo, WIPO Case No. D2020-0636; MOTUL v. Contact Privacy Inc. Customer 0155098997 / Milen Radumilo, WIPO Case No. D2020-0597; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-0409; Shiseido Americas Corporation v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-0184; Alstom v. Contact Privacy Inc. Customer 0155604942 / Milen Radumilo, WIPO Case No. D2020-0120. In addition to the above, the Respondent has previously been involved in a domain name dispute with the Complainant regarding the domain name <sodexo2018.com> in which it was found that the domain name was registered in bad faith. See SODEXO v. Perfect Privacy, LLC, Network Solutions, LLC (USA) / Milen Radumilo (Romania), supra. Consequently, the Panel finds that the Complainant has successfully demonstrated that the Respondent registered the disputed domain name <sodexo.pro> in order to prevent the Complainant from reflecting the trademark SODEXO in a corresponding domain name and that there is a documented pattern of bad faith conduct.
Given the above and in the absence of any evidence to the contrary, the Panel agrees with the Complainant that the Respondent knew or should have known of the Complainant’s trademarks when registering and using the disputed domain name <sodexo.pro>.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name <sodexo.pro> has been registered and used in bad faith.
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 <sodexo.pro> shall be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: October 4, 2020