The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
The disputed domain names <sodexobenefictscenter.com>, <sodexobenifitscenmter.com>, and <wwwsodexobenefitscenter.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2021, 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 March 4, 2021.
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 March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 27, 2021. 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 a French company founded in 1966. It is one of the largest companies in the world specializing in food services and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. For the fiscal year 2019, the Complainant’s consolidated revenues reached EUR 22 billion.
The Complainant is the registered owner of numerous trademarks containing the word “sodexo”, inter alia International trademark registration no. 1240316 for SODEXO in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 with a priority of October 23, 2014 and European Union trademark registration no. 008346462 for SODEXO in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 with a priority of June 8, 2009 (the “SODEXO Marks”). Furthermore, the Complainant is registered owner of numerous domain names containing the SODEXO Marks, including <sodexo.com> and <sodexo.pa>. The SODEXO Marks have already been found to be well known (See for example Sodexo v. 张存硕 (Cun Shuo Zhang), WIPO Case No. D2020-0312 (<sodexobenfits.com> et al.); Sodexo v. 张存硕 (Cun Shuo Zhang) SODEXO v. Contact Privacy Inc. Customer 1246053778 / Edwin Smith, WIPO Case No. D2020-0566 (<sodoxe.com>)).
The disputed domain names have been registered on November 6, 2012, January 14, 2021, and January 22, 2021, respectively. All domain names are used in connection with websites featuring third parties’ advertising links related to the Complainant’s business.
With regard to the three elements specified in the Policy, paragraph 4(a), the Complainant contends that each of the three conditions is given in the present case.
(i) The disputed domain names are confusingly similar to the SODEXO Marks, as they fully include such marks and as they are built of typos of the SODEXO Marks and the English words “benefits” and “center”. The Complainant argues that the SODEXO Marks are clearly perceived by consumers as the predominant part of the disputed domain names and that the addition of the descriptive words “benefits” and “center” and variations thereof is not sufficient to distinguish them from the SODEXO Marks.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. It states that the Respondent is not commonly known by the disputed domain names and that the Respondent 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 names and to use them.
(iii) The Complainant claims that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent most likely knew the SODEXO Marks when it registered the disputed domain names because such trademarks are well known and highly distinctive. With regard to bad faith use, the Respondent states that the Respondent is deliberately using the disputed domain names to exploit the SODEXO Marks by attracting Internet users to its commercial websites.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The disputed domain names are confusingly similar to the SODEXO Marks as they contain the SODEXO Marks in their entirety, merely adding variations of the dictionary terms “benefits” and “center” and, in the case of one of the disputed domain names, the letters “www”. The SODEXO Marks are easily recognizable within the disputed domain names.
The Panel finds that the Complainant satisfied the requirements of the Policy, paragraph 4(a)(i).
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of the Policy, paragraph 4(a)(ii). As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The use of the disputed domain names in connection with websites featuring commercial links for competing services is no bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under the Policy, paragraphs 4(a)(ii) and 4(c).
The Panel is satisfied that the Respondent registered and used the disputed domain names in bad faith.
First, the Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the SODEXO Marks and therefore in bad faith. As confirmed by previous decisions under the UDRP, the SODEXO Marks are well known. Given that the Respondent is using the disputed domain names in connection with websites featuring advertising links competing to the Complainant’s business, it is inconceivable that the Respondent has been unaware of the Complainant and its SODEXO Marks when registering the disputed domain names.
Second, by fully incorporating the SODEXO Marks into the disputed domain names and by using the disputed domain names in connection with websites featuring competing advertising links, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the disputed domain names <sodexobenefictscenter.com>, <sodexobenifitscenmter.com>, and <wwwsodexobenefitscenter.com> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: May 9, 2021