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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2020-1580

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 (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexobenefifscdnter.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 June 16, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name and <sodexo.dev>. On June 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain name and <sodexo.dev> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2020 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint related to the disputed domain name on June 23, 2020 and filed a separate complaint for <sodexo.dev>.

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 July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on August 19, 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

Founded in 1966, the Complainant is one of the largest companies in the world specialising in foodservice and facilities management. With 470,000 employees serving 100 million consumers in 67 countries, the Complainant is one of the largest employers worldwide. It owns registered trade mark rights in many countries for the SODEXO word mark (previously SODEXHO) and for various combined word and logo marks that incorporate the mark SODEXO. In particular, it owns European Union Trade Mark registration 008346462 for SODEXO registered on February 1, 2010, and various combined word and logo mark registrations in Panama, including Panamanian registration 167186-01. It also owns various domain names including its SODEXO mark, including <sodexo.com> at which it sets out is various services, including, of relevance here, benefits and rewards services for private and public organisations.

The disputed domain name was registered on February 14, 2020, and redirected to a website in French that offered amongst other products, ready made clothes and beauty products. The disputed domain name is currently on dynamic redirection.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the SODEXO mark as set out above. It says that the disputed domain name incorporates the mark SODEXO and associates it with the English words “benefit(f)s” and “ce(d)nter” which are internationally understood by consumers. It says that the letters “f” and “t” are placed next to each other on QWERTY or AZERTY keyboards. Therefore, the term “benefifs” is perceived by the public as an obvious misspelling of the word “benefits”. Similarly, it says that the letters “d” and “e” are placed next to each other on QWERTY or AZERTY keyboards. Therefore, the term “cdnter” is perceived by the public as an obvious misspelling of the word “center”. The Complainant asserts that consumers obviously read the disputed domain name as meaning “sodexo benefits center” and that Internet users will consider that it is confusingly similar to the Complainant’s SODEXO mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and has no rights in SODEXO whether as a corporate name, a trade name, business name or trade mark and that the Respondent is not commonly known by the disputed domain name. It says also that the Respondent does not have any affiliation, sponsorship, or connection with the Complainant and has not been authorised, licensed, or otherwise permitted by the Complainant to register the disputed domain name.

As far as registration and use in bad faith is concerned, the Complainant submits that the mark SODEXO is a distinctive coined term and that no third party would seek to use it unless they sought to create an association with the Complainant’s business and trade mark. The Complainant says further that due to the very substantial international size and scope of the Complainant’s business under the SODEXO mark the Respondent must have been aware of the SODEXO mark upon registration of the disputed domain name. In this regard, the Complainant notes that it carries on business in Panama under the SODEXO mark.

The Complainant submits that by using the SODEXO mark in the disputed domain name together with the misspelt words for “benefit center” that the public will believe that the disputed domain name comes from the Complainant group or is linked to it in so far as it provides services specialised in employee benefits.

Significantly, the Complainant points out that the Respondent has already been involved in two domain name disputes against the Complainant as follows:

- on March 3, 2020, concerning the registration of the domain name <sodexorewardhib.com>: Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132;

- on April 8, 2020, concerning the registration of the domain names <benefitssodexo.com> and <sodexovoya.com>: Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310.

By using the disputed domain name, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, prospective customers by creating a likelihood of confusion with the Complainant’s name and mark and by misleading them into believing that its own products are proposed, authorized or endorsed by the Complainant. It says that the unauthorised registration of the disputed domain name by the Respondent and its use for diverting Internet users to a third party’s commercial website are solely for the purpose of commercial gain and constitutes bad faith registration and use.

Further, the Complainant says that the inference of bad faith is only confirmed by the Respondent’s use of a privacy service to register the disputed domain name and to mask its identity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns numerous registered trade mark rights for its SODEXO mark and in particular, European Union Trade Mark registration 008346462 for SODEXO registered on February 1, 2010. The Complainant’s registered trade mark is wholly incorporated into the disputed domain and the addition of “benefifscdnter” before the “.com” generic Top Level-Domain (“gTLD") does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s SODEXO trade mark registration. As a result, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name and has no rights in the mark SODEXO whether as a corporate name, a trade name, business name or trade mark and that the Respondent is not commonly known by the disputed domain name. It has also asserted that the Respondent does not have any affiliation, sponsorship or connection with the Complainant and has not been authorised, licensed, or otherwise permitted by the Complainant to register the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case and also for the reasons outlined under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the mark SODEXO is a distinctive coined term and agrees with the Complainant that no third party would seek to use it unless they sought to create an association with the Complainant’s business and trade mark. Further, the Complainant’s business is truly international and of such a size and scope that it has developed a very substantial reputation and goodwill as has been recognized by previous UDRP panels. In addition the Complainant carries on business in Panama under the SODEXO mark and the Respondent has been involved in two previous UDRP cases concerning the Complainant’s SODEXO mark as noted by the Complainant and set out above. In short, the Respondent must have been aware of the Respondent’s SODEXO mark and business when it registered the disputed domain name in February 2020.

The disputed domain name contains the Complainant’s mark and misspelled words that were obviously intended to refer to “benefit center”. The Complainant offers services in this regard, as noted above, and the Respondent obviously sought to confuse Internet users seeking the Complainant by using the disputed domain name to divert Internet users for its own gain to a commercial French website selling ready-made clothes and beauty products. It is apparent that the Respondent has sought to use the disputed domain name containing the Complainant’s very well reputed mark to divert Internet users to this website for commercial gain and under paragraph 4(b)(iv) of the Policy this amounts to evidence of registration and use in bad faith.

It appears based on the list provided by the Complainant of some 67 previous UDRP cases in which the Respondent has been involved in 2018 - 2019, many of which involve very well-known trade marks, that the Respondent has embarked on a pattern of similar conduct with other domain names. Considering the two previous UDRP cases involving the Complainant, namely Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132 and Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310 it is clear that the Respondent has embarked on a pattern of conduct to take advantage of the Complainant’s SODEXO trade mark. The Panel infers that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct in terms of paragraph 4(b)(ii) of the Policy.

The fact that the Respondent used a privacy service to register the disputed domain name and to mask its identity only reinforces the Panel’s view of the Respondent’s bad faith. As a result, the Panel finds that the Complaint also succeeds under this element of the Policy.

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 <sodexobenefifscdnter.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: August 21, 2020

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