The Complainant is Sodexo of Issy-les-Moulineaux, France, represented by Areopage, France.
The Respondent is Sodexo Now of New Delhi, India.
The disputed domain name <sodexo2cash.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 18, 2015.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 3, 2015. 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.
With principal offices in France, the Complainant is a well-known company that provides food and facility management services on a worldwide basis, including within India, the domicile of the Respondent. The Complainant has obtained, among others, registrations for the SODEXO mark with the European Community Trademark authority (“CTM”) (e.g., Registration No. 008346462) and the Government of India Trade Marks Registry (e.g., Registration No. 1635770).
Located in India, the Respondent owns the disputed domain name, <sodexo2cash.com>, which was registered on December 8, 2014. It is used to host a website that offers Internet users in India the opportunity to exchange Indian meal vouchers for discounted sums of money.
Founded in 1966, the Complainant is a French company that offers food and facility management services to the public. The eighteenth largest employer in the world, it has 419,000 employees operating at 32,700 sites in 80 countries worldwide. In fiscal year 2013, the Complainant's revenues reached EUR 18.4 billion.
The Complainant provides its goods and services under the mark SODEXO, which is registered with many countries and authorities, including the European Community and India, the latter being the domicile of the Respondent. The Complainant’s mark is world famous, as has been noted by several prior UDRP panels. The Complainant also conducts business through its websites found at multiple domain names, including <sodexo.com>.
The disputed domain name, <sodexo2cash.com>, is confusingly similar to the SODEXO mark. The name includes the full mark and adds the term “2cash”. The latter term is in effect “to cash”, which suggests to potential customers that they can exchange some good or service related to the mark for money. As such, the term does not reduce the confusing similarity between the name and the mark.
The Respondent has no rights or legitimate interests in the disputed domain name. Initially, the Respondent’s website linked to the name solicited Sodexo meal and gift vouchers, issued in India, from Internet users for a discounted sum of money. After being sent a cease-and-desist letter from the Complainant, the Respondent altered the website to reference all such Indian vouchers as targets for discount purchase. The Complainant has been reliably informed that such voucher exchange/purchase offers conducted in this manner are illegal under Indian law.
There is no affiliation between the Complainant and Respondent, nor has the Respondent been authorized or licensed by the Complainant to use its mark in a domain name. Moreover, there is no evidence that the Respondent has been commonly known as the disputed domain name prior to its registration.
The disputed domain name was registered and is being used in bad faith. Due to its worldwide fame, including within the Respondent’s domicile, the SODEXO mark and the Complainant's rights in that mark were well known to the Respondent. The Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating the likelihood of confusion with the Complainant’s mark and the implication that the Complainant authorized or endorsed the proposals suggested at that website. Moreover, the Respondent’s use of its website for activity considered illegal under Indian law and its failure to respond to the Complainant's cease-and-desist letter are also indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find for the Complainant and grant it a transfer of the disputed domain name, <sodexo2cash.com>, if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
Clearly, the Complainant possesses rights in the SODEXO mark. Several prior UDRP panels have reached this conclusion, and the Complainant has presented to the Panel effective evidence (Annexes 6 and 10 of the Complaint) of its valid CTM and Indian government trademark registrations for that mark. See, for example, SODEXO v. Shahzan / PrivacyProtect.org, WIPO Case No. D2013-1308; and Sodexho Alliance v. LaPorte Holdings, Inc, WIPO Case No. D2005-0287.
While the disputed domain name, <sodexo2cash.com>, may not be identical to the SODEXO mark, it appears to the Panel that the name would be easily confused with the mark. The mark is entirely contained as the first and dominant term of the disputed domain name. The remaining generic alphanumeric term, “2cash”, would seem to suggest to a reasonable Internet user a direct connection to that dominant term, i.e., that someone might be able to transform a good or service connected to the SODEXO mark “to cash”. As a result, the Panel determines that the disputed domain name is confusingly similar to said mark. See, Terex Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0733 (finding <terexcorp.com> to be confusingly similar to the TEREX mark, and stating, “[i]t has long been held 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.”); and Sears Brands, LLC v. Alex Pachan, NAF Claim No. 420527 (finding <searsholdings.com> to be confusingly similar to the SEARS mark).
Therefore, the Panel rules that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Due to the difficulty in proving a negative proposition, a consensus of prior UDRP panels has held that a complainant need set forth only a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name before the burden shifts to that respondent to establish such rights or interests. See, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 (“…it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie case showing on this element, the burden of production shifts to the respondent.”); and Telex Communications, Inc. v. Jinzheng Net, NAF Claim No. FA833071. In this case, the Panel notes that the Complainant has demonstrated clearly that the disputed domain name is confusingly similar to the Complainant's world famous mark and has asserted, without contradiction, that there is no affiliation or license that would grant the Respondent the authority or permission to use that mark in the disputed domain name or otherwise. Thus, the Panel believes that the Complainant has set forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not filed a Response, so the Panel is compelled to accept all the reasonable contentions made in the Complaint that are not contradicted otherwise in the record or by the Panel's independent knowledge. See, Bayerische Motoren Werke AG v. Bavarian AG, NAF Claim No. 110830; and Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398 (“Respondent has not reacted to the Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.”).
In the absence of a Response, the Panel will examine the record to determine whether there is convincing evidence to support the proposition that the Respondent has rights or legitimate interests in the disputed domain name per Policy paragraph 4(c), which lists criteria sufficient to establish such rights or interests, as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, the Complainant has contended, and the Panel has accepted, that the Respondent has used the disputed domain name for a website that offers discounted amounts of money for various vouchers, some of which are produced by the Complainant. The Panel might be inclined to conclude that issuing such offers — the repurchase of items at discounted prices — is a legitimate activity were it not for the Complainant’s other contention that the practice of offering money for such vouchers in this manner is illegal in India, the domicile of the Respondent and the fact that nothing on the website at the disputed domain name tells the Internet user that the website is not associated or sponsored by the Complainant. The Panel would not be able to find that an illegal practice is a bona fide offering of goods or services, therefore if the Complainant is right and the practice of offering money for vouchers is illegal in India then the Respondent cannot turn to paragraph 4(c)(i) of the Policy for support. In any event, as the website does not disclose the lack of relationship with the Complainant and its SODEXO trademark the Panel finds that 4(c)(i) does not apply. Moreover, as the aforementioned website offers from the Respondent are obviously commercial in nature, the Panel must conclude that paragraph 4(c)(iii) of the Policy is inapplicable as well. See, Incapital Holdings, LLC v. Goldzoneltd c/o Frank Neumann, NAF Claim No. 1384994 (“The Panel finds that using the disputed domain name appropriating Complainant’s mark for an illegal purpose for Respondent’s profit is not a bona fide offering of goods or services according to Policy [paragraph] 4(c)(i) or a legitimate noncommercial or fair use under Policy [paragraph] 4(c)(iii).”); and Nycomed Danmark ApS v. Antonio Diaz, WIPO Case No. D2006-0779 (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii)).
The Respondent is nominally “Sodexo Now”. The Panel can see a direct correlation between this name and the disputed domain name, <sodexo2cash.com>, as the first term in each is exactly the same. Thus, the Panel might be tempted to find that the Respondent has complied with paragraph 4(c)(ii) of the Policy. However, the Respondent has provided no evidence to suggest when the “Sodexo Now” name was adopted and why. The Panel finds that the mere registration of a domain name which includes a third party’s trademark does not create rights or legitimate interests when the overall circumstances demonstrate the selection of domain name was not done for the purposes of making bona fide use of the mark, such as in the present case. As a result, the Panel concludes that paragraph 4(c)(ii) of the Policy fails to apply to this case. See, Michael Smith Custom Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Custom Shirt Shop c/o Jim Nice, NAF Claim No. 1109402 (“...in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); and Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 (“what paragraph [4(c)](ii) requires is evidence that the Respondent has rights prior to and not only following from use of the domain name…while there is some evidence that the Respondent has become known by the domain name, that evidence is insufficient for a finding under paragraph 4(c)(ii) of the Policy...because her adoption of “Paule Ka Creations” as a business name coincided with her registration and use of the [disputed] domain name.”).
As the Panel finds no rationale to apply Policy paragraph 4(c) in this case, and the Respondent provides no other evidence to rebut the Complainant’s prima facie case, the Panel determines that said prima facie case prevails.
Therefore, the Panel rules that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.
As the Complainant correctly asserts, there have been many UDRP panels that have found bad faith registration and use of disputed domain names when those domain names were confusingly similar to very famous marks and no legitimate or authorized use of such domain names were being made by the respective respondents. See, Pfizer Inc. v. NA, WIPO Case No. D2005-0072 (“Simply registering famous marks as domain names may, by itself in the appropriate circumstance, support a conclusion of bad faith registration and use.”); and The Caravan Club v. Mrgsale, NAF Claim No. 95314 (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”). The Panel concludes, as have other prior Policy panels, that the Complainant’s mark, SODEXO, falls in that category of very famous marks, and so the Panel finds that in these circumstances (i.e., no authorization from the Complainant or legitimate use of the disputed domain name) the Respondent has registered and is using the disputed domain name in bad faith. See, for example, SODEXO v. Shahzan / PrivacyProtect.org, supra (“The Panel would also reiterate the principle established in previous UDRP decisions that the registration of a domain name incorporating a widely-recognized or well-known trade mark by someone who has no connection whatsoever with the trade mark is a clear indication of bad faith.”); Sodexho Alliance v. LaPorte Holdings,Inc, supra (“Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.”); and SODEXO v. SODEXHO Catering, CID-300335SOD, CID-512981SOD, Ilker Sirin, WIPO Case No. D2013-1950.
Therefore, the Panel rules that the Complainant has succeeded in proving that the disputed domain name was registered and is being 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 <sodexo2cash.com>, be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: March 17, 2015