WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-3132

1. The Parties

The Complainant is Sodexo, France, represented by Areopage, France.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexorewardhib.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 January 9, 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 January 10, 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 January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 18, 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.

4. Factual Background

The Complainant is the French company Sodexo (previously called Sodexho Alliance), founded in 1966 and one of the largest companies in the world specialized in foodservices and facilities management, with 460,000 employees in 72 countries.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademarks SODEXO and SODEXHO, including the following:

-International Registration No. 964615 registered on January 8, 2008 for the mark SODEXO, protected in several countries including the United States of America;

-International Registration No. 1240316 registered on October 23, 2014 for the mark SODEXO;

-International Registration No. 689106 registered on January 28, 1998 for the mark SODEXHO;

-European Trademark No. 006104657 for the mark SODEXO, filed on July 16, 2007 and registered on June 27, 2008;

-Panamanian Trademark Registrations Nos. 167186-01, 167190-01, 167193-01, 167195-01, 167197-01, 167199-01, 167201-01, for the mark SODEXO filed on December 12, 2007.

The Complainant is also the owner of many different domain names comprising SODEXO and SODEXHO, such as <sodexorewardhub.com>, <sodexo.com>, <sodexho.com>, <sodexousa.com>, and <sodexo.fr>, among others.

The disputed domain name was registered on October 29, 2019, and resolves to a parking page displaying links related to the Complainant’s competitors and other websites.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name on October 29, 2019 without authorization, combining the famous mark SODEXO with the terms “reward” and “hib”, the latter perceived by the public as a misspelling of the term “hub”.

According to the Complainant, the disputed domain name is likely to cause confusion among third parties, since it reproduces its trademark SODEXO and is confusingly similar to the Complainant’s domain name <sodexorewardhub.com>, used to propose the Complainant’s benefits and rewards services, called Reward Hub.

The Complainant also says that the disputed domain name has been anonymously registered and resolves to a parking page in the French language, featuring links with the Complainant’s competitors and other unrelated websites.

The Complainant alleges that the Respondent has no license or authorization and also no relationship with the Complainant.

Furthermore, the Complainant mentions that the Respondent is not commonly known by the disputed domain name and that it was registered without any rights or legitimate interests.

According to the Complainant, due to the well-known reputation of its mark SODEXO, the Respondent undoubtedly knew of its existence when registered the disputed domain name, which was done with the purpose of achieving commercial gain.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for SODEXO in different countries, as well as many domain names including the mark SODEXO, such as the domain names <sodexorewardhub.com> and <sodexo.com>.

The Complainant’s trademarks and domain names predate the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the terms “reward” and “hib” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademark SODEXO.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable 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. Instead, there is enough evidence that the disputed domain name resolved to a parking page in the French language displaying links related to the Complainant’s competitors and other websites.

Therefore, the Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark SODEXO is registered by the Complainant in several jurisdictions, including the United States of America and Panama (where Carolina Rodrigues, Fundacion Comercio Electronico is located), and has been used for a long time.

The disputed domain name comprises the trademark SODEXO in its entirety in addition to the terms “reward” and “hib”. The term “hib” certainly represents an intentional misspelling of “hub”, included in the Complainant’s registered and used domain name <sodexorewardhub.com>.

The Complainant’s SODEXO mark is indeed distinctive and widely well-known. Thus, a domain name that comprises such a mark is itself evidence of the Registrant’s bad faith. The fact that the disputed domain name was registered with a privacy service also indicates bad faith in this case.

It is clear that at the time of registration of the disputed domain name the Respondent was aware of the Complainant’s fame and notoriety and registered it in bad faith to intentionally attracting Internet users to its website, creating a likelihood of confusion with the Complainant.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademarks by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark SODEXO as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <sodexorewardhib.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: March 3, 2020