WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-1393

1. The Parties

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

The Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <sodexobenefitscentrer.com> and <ussodexo.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2021, 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 May 14, 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 May 17, 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 May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on June 22, 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.

4. Factual Background

The Complainant is a limited company registered in France. It specializes in food services and facilities management, including the provision of employee meal services.

The Complainant is the owner of various registrations for word and figurative trademarks comprising the mark SODEXO, including for example:

- International trademark No. 964615 for a figurative mark SODEXO, registered on January 8, 2008, in numerous classes and designating numerous territories including the United States;
- International trademark No. 1240316 for the word mark SODEXO, registered on October 23, 2014, in numerous classes.

The disputed domain name <ussodexo.com> was registered on March 15, 2021. The disputed domain name <sodexobenefitscentrer.com> was registered on April 23, 2021.

The Complainant has submitted evidence that both the disputed domain names have resolved to websites containing links to websites operated by other providers of employee “meal cards”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has 470,000 employees serving 100 million customers in 67 countries around the world, its consolidated revenues in 2019 reaching EUR 22 billion. It provides evidence of its business profile and reputation, including details of its Panama-specific website located at “www.sodexo.pa”. The Complainant submits that, among its business services, it provides benefits and rewards by way of vouchers and cards, including employee benefits, incentives and public benefits.

The Complainant submits that the disputed domain names are confusingly similar to its SODEXO trademark. It contends that the disputed domain name <ussodexo.com> combines its trademark with the geographical abbreviation for the United States, which does not distinguish it from the trademark. It contends that the disputed domain name <sodexobenefitscentrer.com> combines its trademark with the ordinary words “benefit” and “center”, although the latter of these has been deliberately misspelled by way the insertion of an additional letter “r” and constitutes “typosquatting”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never licensed or authorized the Respondent to use its SODEXO trademark, that the Respondent has not been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. It states that its mark SODEXO is a fanciful term and that the Respondent can only have registered the disputed domain names, which include that trademark, for the purpose of creating confusion with the Complainant’s mark. In the case of the disputed domain name <ussodexo.com> the Complainant submits that the Respondent is misrepresenting that its relevant website relates to the Complainant’s United States activities, and that in the case of <sodexobenefitscentrer.com> is attempting to confuse Internet users by the adoption of a deliberate spelling mistake.

The Complainant further submits that the Respondent is using the disputed domain names to take unfair advantage of the Complainant’s trademark by redirecting Internet users to websites operated by the Complainant’s competitors.

The Complainant provides evidence that it has brought six previous cases under the UDRP against the same Respondent, between March 2020 and April 2021, all of which have resulted in transfers of the relevant domain names (e.g., Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3132; Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0310). The Complainant also cites seven other decisions against the Respondent under the UDRP, which it submits were brought by owners of other well-known trademarks (e.g., Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1723; Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1611.

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

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in respect of the name and mark SODEXO. The disputed domain name <ussodexco.com> comprises that trademark preceded by the letters “us”, which the Panel accepts is commonly regarded as an abbreviation for the United States. The disputed domain name <sodexobenefitscentrer.com> combines the Complainant’s trademark with the dictionary words “benefit” and “center”, although the latter of these terms is misspelled by the insertion of an additional letter “r”. In neither case do these additions prevent the Complainant’s trademark from being recognizable within the disputed domain name and the Panel finds therefore that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for the registration and use of the disputed domain names, or evidence of rights or legitimate interests in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds the Complainant’s trademark SODEXO to be distinctive in nature and has seen no evidence that the mark has any meaning in commerce other than to refer to the Complainant and its business.

The disputed domain name <ussodexo.com> combines the Complainant’s trademark with the commonly accepted geographical indicator “us” and the Panel accepts the Complainant’s submission that the disputed domain name inevitably implies an association with the Complainant’s business in that territory. The disputed domain name is therefore inherently misleading.

The disputed domain name <sodexobenefitscentrer.com> combines the Complainant’s trademark with the word “benefits” and the misspelled word “centrer”. The Panel can conceive of no purpose to the disputed domain name other than to confuse Internet users into believing that the disputed domain name is connected with the Complainant and its services, and in view of the deliberate misspelling, the Panel finds not only that the disputed domain name is inherently misleading but also that it constitutes an instrument of fraud.

The Panel further finds that the Respondent has used the disputed domain names, both of which have been found to be inherently misleading, for the purpose of websites offering links to the websites of other providers of employee meal services who are competitors of the Complainant. The Panel infers that the Respondent receives pay-per-click or similar revenues in respect of these links. The Panel therefore finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its websites or of a product or service on its websites (paragraph 4(b)(iv) of the Policy).

The Panel also accepts the Complainant’s evidence that the Respondent has been involved in numerous other cases under the UDRP, brought by both the Complainant and other trademark owners, in which bad faith has been found against the Respondent (e.g., Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra.; Government Employees Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra.). The Panel therefore finds there to be clear evidence of a pattern of bad faith registrations on the part of the Respondent as discussed in e.g. section 3.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds in the circumstances that the disputed domain names have been registered and are 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 names, <ussodexo.com> and <sodexobenefitscentrer.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: June 24, 2021