The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Dan Sharvit, Powerhouse videos, Israel.
The disputed domain name <cibus-sodexo.com> registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, 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 August 26, 2020. On August 28, 2020, the Complainant requested the proceedings be temporarily suspended. The proceedings were suspended the same day. On October 5, 2020, the proceeding were reinstituted. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2020. Apart for brief email queries of August 25, 26, and 27, 2020, no formal Response was filed with the Center.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 4, 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 world’s largest providers of food services and facilities management services. Its mark SODEXO is used and protected in 67 countries around the world, including Israel. The Complainant owns a number of trademark registrations for its SODEXO mark, including International Trademark Registration No. 964615, obtained under priority of French Trademark Registration No. 07 3 513 766, which registered on July 16, 2007.
The word “cibus,” which is prefixed to the Complainant’s mark within the disputed domain name, means “food” in Latin. The Complainant’s local subsidiary in Israel uses the domain name <cibus-sodexo.co.il> and uses the words “Cibus” and “Sodexo” in conjunction with one another on its website.
The Respondent registered the disputed domain name on July 13, 2020. There is no currently active web page at the disputed domain name. But the Complainant is concerned that the Respondent may use the disputed domain name to send fraudulent email messages requesting payment of false invoices.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not file a formal Response, but did informally communicate with the Center a number of times. Notably, one of those email messages, sent on August 20, 2020, stated that “the domain cibus-sodexo.com is the same as the Israeli company https://www.cibus-sodexo.co.il/ which is the largest meal provider for companies here in Israel, if you wish to buy this domain you are more than welcome, it’s actually for sale.”
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 in bad faith.
The Panel finds that all three of these elements have been met in this case.
The Complainant clearly has rights in the mark SODEXO, evidenced by the registration certificates for that mark. The disputed domain name, for purposes of this first element, is confusingly similar to the Complainant’s mark. The addition of the word “cibus” within the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Complainant has succeeded under this first element of the Policy.
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. On this point, the Complainant asserts that the Respondent:
- has no rights to SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights;
- 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;
- 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.
The Respondent has not introduced any of its own evidence to contradict these assertions. Accordingly, the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not come forth with evidence to rebut that showing. The Complainant has satisfied this second element of the Policy.
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location”.
Because the Complainant’s SODEXO mark is well known, and because the Respondent acknowledged the existence and prominence of the Complainant in the Respondent’s August 20, 2020 email to the Center, the Panel finds that the Respondent was aware of the SODEXO mark when it registered the disputed domain name. The Panel finds, on these facts, that the Respondent targeted the Complainant and its SODEXO mark when it registered the disputed domain name. These facts show bad faith registration of the disputed domain name.
Bad faith use is shown from the Respondent’s passive holding of the disputed domain name. 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 and Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676, in which the panel therein found that passive holding, under the totality of circumstances of the case, can constitute a bad faith use under the Policy.
The following circumstances of this case demonstrate bad faith use from the Complainant’s passive holding, namely, the strong reputation and well-known character of the Complainant’s SODEXO mark, the lack of evidence provided by the Respondent of any good faith use with regard to the disputed domain name, and the fact that the disputed domain name is essentially identical to the Complainant’s Israeli subsidiary company, which shows that the Respondent likely intended to divert or mislead potential Internet users from the Complainant’s legitimate website.
The Complainant has successfully established the third Policy element.
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 <cibus-sodexo.com> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: November 18, 2020