The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Perfect Privacy, LLC, Network Solutions, LLC, United States of America / Milen Radumilo, Romania.
The disputed domain name <sodexo2018.com> (the “Domain Name”) is registered with Dropcatch Marketplace LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, August 29, 2019, the Registrar transmitted by email to the Center its verification response 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 30, 2019, 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 31, 2019.
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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2019.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on October 14, 2019. 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, Sodexo, a French limited company, formerly known as Sodexho Alliance, founded in 1966, operates a well-known international business in 72 countries with 460,000 employees serving 100 million consumers, and revenues in excess of 20 billion euros in 2018. It provides restaurant and catering, facility management, and other workplace services, including reception, technical maintenance and repair, housekeeping, security, laundry, waste management, and space management services; employee benefits, incentives and recognition, and public benefits services, including restaurant, transport, and gasoline, and gift vouchers, gift boxes, and the management and control of the distribution of aid and public subsidies; and personal and home services, including childcare, tutoring and adult education, concierge, and home care for dependent persons.
From 1966 to 2008 Sodexo operated its business under the SODEXHO mark and trade name. Since 2008, Sodexo has operated under the SODEXO mark and name.
Among other registrations, including international registrations, the Complainant owns a French registration for its trademark SODEXO in Class(es) 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 issued on July 16, 2007, under registration No. 07 3 513 766, and European trademark registrations for its trademark SODEXO and its figurative mark SODEXO+design, in the same classes, filed on June 8, 2009, and July 16, 2007, respectively, under registration Nos. 008346462 and 006104657, the latter of which was renewed in 2017. The mark, including its predecessor mark SODEXHO, is protected in 80 countries by registrations, including in Romania.
The Complainant owns the domain name <sodexo.com>, at which it operates a website, and from which it advertises and offers its services, and numerous other Top-Level Domain (“TLD”) names that consist of or include the mark SODEXO and from which it operates websites, including <sodexo.ro>.
The Respondent, Milen Radumilo, whose address is in Romania, registered on May 14, 2019, the Domain Name, <sodexo2018.com>, on which it operated a website with pay-per-click links when the Complainant submitted its Complaint.
In addition to facts set forth in the Factual Background in Part 4 above, the Complainant contends the following.
Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:
Its mark SODEXO has a strong reputation and is widely known all over the world, including in Romania, where it operates a website under the domain name <sodexo.ro>, among others, and that UDRP decisions have recognized the well-known character of its SODEXO mark, citing ten decisions, the earliest of which is Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287 and the latest of which is Sodexo v. “on Behalf of sodexorewrdhub.com OWNER c/o whoisproxy.com” / Tulip Trading Co., WIPO Case No. D2019-1166.
The Domain Name is composed of the Complainant’s SODEXO mark and the number 2018, signifying the calendar year 2018. The addition of “2018” does not distinguish the Domain Name from the Complainant’s mark and people will understand the Domain Name as referring to activities or projects of the Complainant during the year 2018. The addition of a generic or descriptive word to a mark in a domain name will not alter the confusing similarity of a domain name to a mark. The public will believe that the Domain Name comes from the Complainant or is associated with it.
The Respondent registered the Domain Name and is using it to resolve to a parking site in French with advertising links to third-party web sites, including links that consist of or include its mark SODEXO, and including links that relate to domestic services.
Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:
The Respondent has no rights in the marks SODEXO or SODEXHO as a corporate name, trade name, shop sign, mark, or domain name that are earlier than the Complainant’s trademark rights. The Respondent was not commonly known by the Domain Name prior to the Complainant’s adoption and use of the corporate name, business name, and marks SODEXHO and SODEXO. The Complainant has not licensed, authorized, or permitted the Respondent to register the Domain Name or use it and the Respondent has no sponsorship, affiliation, or other connection with the Complainant.
Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:
The Respondent most likely knew the SODEXO mark, particularly in Romania, where the Respondent is located, when it registered the Domain Name, because of its well-known character and reputation, and knew that it had no rights or legitimate interests in the Domain Name. The mark SODEXO is fanciful, and no one would choose the word “Sodexo”, or a variation of it, for a domain name unless seeking to create an association with the Complainant. Previous decisions under the UDRP recognize that knowledge of a complainant and its marks at the time that a respondent registers a domain name will give rise to an inference of bad faith.
The Respondent is using the Domain Name to exploit confusion with the Complainant’s mark SODEXO and attract Internet users to click on third-party commercial links to websites competing with the Complainant and other unrelated websites solely for commercial gain, which constitutes bad faith. Panels under the UDRP have found that using a domain name to host a parking page with pay-per-click links is not a bona fide offering where the links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. This use may not only confuse the Complainant’s customers and potential customers, but also interfere with its business by frustrating attempts of Internet users to reach the Complainant and dilute its mark. The Respondent offers the domain name for sale to the general public, demonstrating that it registered and has held the Domain Name for purpose of reselling it at a profit. One can infer that the Respondent’s purpose was to profit in excess of its out-of-pocket costs, because otherwise little economic purpose existed to offer the Domain Name for sale.
As contributing factors, the Respondent failed to perform a trademark search and registered the Domain Name anonymously. Lastly, the Respondent has been a respondent in other cases in which it reproduced well-known marks owned by other parties in a domain name, which the panel ordered transferred to the trademark owner.
The Respondent did not submit a response to the Complaint.
The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint based on the statements and documents submitted. Rules, paragraph 15(a).
Because the Complainant has the burden of proof, Policy, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Notwithstanding the Respondent’s default, the Complainant must prove the elements set forth below in Part 6(B) of this Decision. Policy, paragraph 4(a).
However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged—and the contentions urged by the Complainant based upon these facts—and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; Facebook Inc. v. te5gfh gtfghbfh, WIPO Case No. D2018-2433; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu, WIPO Case No. D2018-2424.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3; PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.
The Complainant must prove the following three elements to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and(iii) the Respondent has registered and is using the Domain Name in bad faith. Policy, paragraph 4(a).
To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Name is identical or confusingly similar to this trademark.
The Panel finds that the Complainant’s French and European trademark registrations establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1. Additionally, previous panels have also recognized its trademark rights in its SODEXO mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s SODEXO trademark. The Domain Name incorporates the entire SODEXO trademark and the SODEXO trademark is easily recognizable within the Domain Name. WIPO Overview 3.0, section 1.7.
The inclusion in the Domain Name of the number “2018,” representative of the descriptive calendar year 2018, does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. Lastly, the inclusion of the generic Top-Level Domain (“gTLD”) “.com” is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11.
Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights.
The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, its 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Policy, paragraph 4(c).
The Panel finds, based on the Complainant’s trademark registrations, that the Complainant’s trademark rights precede the registration of the Domain Name. The Complainant has alleged that (1) the Respondent was not commonly known by the Domain Name prior to the Complainant’s adoption and use of its SODEXO mark; and (2) the Complainant has not licensed, authorized, or permitted the Respondent to register the Domain Name or use it; and (3) the Respondent has no connection with the Complainant. Because the Respondent has not contested these allegations, and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts these allegations as proven for the purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
Moreover, the Respondent has not claimed that it is using the Domain Name in connection with a bona fide offering of goods or services or that it is making a noncommercial or fair use of the Domain Name. For the reasons set forth in this paragraph and the preceding paragraph, the Panel finds that the Complainant has shown, prima facie, the second element - that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
The Respondent here has not submitted any evidence to rebut the prima facie showing, having failed to respond to the Complaint.
If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, WIPO Case No. D2019-0245; Sperre Mek. Verksted AS v. Perfect Privacy, LLC / The Allied Valve Spares Mfg. Co., WIPO Case No. D2018-2904.
Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.
The Policy provides that the following circumstances are “evidence of the registration and use of a domain name in bad faith: [. . .] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Policy, paragraph 4(b).
Because the scenarios enumerated in paragraph 4(b) of the Policy are without limitation, panels have applied the concept of a “competitor” beyond an ordinary business competitor, to include “a person who acts in opposition to another” for some means of commercial gain. WIPO Overview 3.0, section 3.1.3.
The Complainant has alleged that the Respondent most likely knew the SODEXO mark in Romania, where the Respondent is located, when it registered the Domain Name, because of its well-known character and reputation, and had no rights or legitimate interests in the Domain Name. The Respondent has not denied this allegation. More importantly, the Complainant has alleged that the mark SODEXO is fanciful, the Respondent has not rebutted this allegation, and, therefore, the Panel accepts this allegation. In the view of the Panel, it is implausible that a domain name registrant would choose this fanciful word for a domain name, together with the obvious reference to calendar year 2018, unless the registrant were targeting the mark SODEXO because of its fame and reputation.
Moreover, previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith registration. WIPO Overview 3.0, section 3.1.4; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook Inc. v. te5gfh gtfghbfh, supra. In over a dozen decisions, panels have found that the SODEXO mark is well-known worldwide, and this Panel agrees.
The selection of the Domain Name, therefore, demands an explanation. The Respondent’s lack of an explanation coupled with an absence of rights or legitimate interests has been found by panels to be a factor tending to show bad faith. WIPO Overview 3.0, section 3.2.1. Additionally, the implausibility of any good faith use to which the Domain Name might be put supports a finding of bad faith registration and use. Cf. WIPO Overview 3.0, section 3.3. Because the Respondent has not offered an explanation and the Panel cannot conceive of one, the Panel finds that the targeting of a fanciful well-known trademark demonstrates bad faith use and that this bad faith existed at the time of the registration of the Domain Name. WIPO Overview 3.0, section 3.2.1. These circumstances compel the Panel to find that the Respondent intentionally chose the Domain Name to take unfair advantage of the Complainant’s trademark and that its use of the domain name has disrupted the business of the Complainant in violation of the Policy, paragraph 4(b)(iii). WIPO Overview 3.0, sections 3.1,4, 3.2, and 3.5.
Additionally, the Complainant has alleged, and the Respondent has not denied, that the Respondent is using the Domain Name to exploit confusion with the Complainant’s mark SODEXO and attract Internet users to click on third-party commercial links to websites competing with the Complainant and other unrelated websites solely for commercial gain demonstrating bad faith. The Complainant is correct that panels under the UDRP have found that using a domain name to host a parking page with pay-per-click links is not a bona fide offering where the links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. In this case, the links do both. Accordingly, the Panel finds that the Respondent registered and used the Domain Name intentionally to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of the Policy, paragraph 4(b)(iv). WIPO Overview 3.0, sections 3.1 and 3.1.4.
Lastly, and importantly, the Respondent has been named in many other cases in which it targeted well-known marks in a domain name, which the panels ordered transferred to the trademark owner. A pattern of targeting, which may support a conclusion of bad faith on its own, at a minimum corroborates and supports the conclusion of bad faith registration and use in this case. WIPO Overview 3.0, sections 3.1.1, 3.2.1, and 3.2.2.
Accordingly, the Complainant has proven the third element, namely, that the Respondent registered and has used the Domain Name 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 <sodexo2018.com> be transferred to the Complainant.
A. Justin Ourso III
Sole Panelist
Date: October 25, 2019