WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Knock Knock WHOIS Not There, LLC / Rohot Paliwal, Sodexo Service

Case No. D2021-1407

1. The Parties

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

The Respondent is Knock Knock WHOIS Not There, LLC, United States of America (“United States”) / Rohot Paliwal, Sodexo Service, India.

2. The Domain Name and Registrar

The disputed domain name <sodexoservice.com> is registered with Automattic Inc. (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 9, 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 14, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.

The Center appointed Daniel Peña as the sole panelist in this matter on June 21, 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 French company specializing in food services and facilities management.

The Complainant is the owner of the following trademark registrations, among others, alleged to be relevant to this matter:

- SODEXO (stylized), International Registration No. 964615, registered on January 8, 2008 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXO, International Registration No. 1240316 registered October 23, 2014 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXHO (stylized), Australian Registration No. 755152 filed on February 16, 1998 in International classes 09, 16, 36, 37, 39, 41, 42.
- SODEXHO (stylized), International Registration No. 689106 registered on January 28, 1998 in International classes 16, 36, 37, 39, 41 and 42.
- SODEXHO (stylized), International Registration No 694302 registered on June 22, 1998.
- SODEXO, European Union Trademark Registration No. 008346462 registered on February 1, 2010 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
- SODEXO QUALITY OF LIFE SERVICES (stylized), International Registration No. 1195702 registered on October 10, 2013 in International classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
- SODEXO QUALITY OF LIFE SERVICES, European Union Trademark Registration No. 011138501 registered on January 22, 2013 in International classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

The disputed domain name was registered on September 30, 2020. The disputed domain name points Internet users to a website proposing the Complainant’s competitors facility management services.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it was founded in 1966 and has grown to be one of the largest companies in the world in the field of food services and facilities management. With 470,000 employees serving 100 million consumers in 67 countries, the Complainant contends that it is one of the largest employers worldwide. The Complainant further asserts that for fiscal year 2019, its consolidated revenues reached EUR 22 billion. The Complainant explains that from 1966 to 2008, the Complainant used the trademark SODEXHO. In 2008, the Complainant simplified the spelling of its mark and name to SODEXO.

The Complainant alleges that it used the SODEXO trademark in connection with the three broad categories of services: (1) On-site Services, (2) Benefits and Rewards Services and (3) Personal and Home Services. The Complainant explains that “On-site Services” relate to restaurant and catering services, as well as, facility management services and workplace services, including a wide-range of on-site services such as reception services, technical maintenance and repair, housekeeping, security, laundry, waste management, space management. The Complainant asserts that “Benefits & Rewards Services” involves the Complainant issuing service vouchers and cards for private and public organizations. The Complainant further asserts that “Personal and Home Services include childcare, tutoring and adult education, concierge services and home care for dependent persons”.

The Complainant also argues that it owns numerous domain names corresponding to and/or containing “sodexo” or “sodexho” that it uses to promote its services, including the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>. Including the above-referenced trademarks, the Complainant contends that the SODEXHO / SODEXO trademarks are continuously and extensively used and protected in 67 countries.

With respect to the first element of the Policy, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered SODEXO Mark, which has been determined by several panels to be a well-known trademark. The Complainant argues that the only difference between the relevant portion of the disputed domain name and the SODEXO trademark is the inclusion of the additional word “service” in the disputed domain name; however, this additional word is not sufficient to eliminate confusing similarity between the disputed domain name and the SODEXO trademark.

With respect to the second element of the Policy, the Complainant alleges that the Respondent has no rights nor legitimate interests in the disputed domain name because it has not used SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights. Moreover, the Complainant also asserts 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 name.

With respect to the third element of the Policy, the Complainant alleges that due to the well-known character and reputation of SODEXO, the Respondent most likely knew of its existence when it registered the disputed domain name and knew that it had no rights or legitimate interests in the disputed domain name. The Complainant further points out that the word “sodexo” is fanciful and that nobody could legitimately choose this word, unless seeking to create an association with the Complainant. The Complainant asserts that the Respondent is attempting to attract, for commercial gain, Internet users to the Complainant’s competitors’ websites by creating a likelihood of confusion with the well-known SODEXO trademark.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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.

Considering these requirements, the Panel finds as follows:

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. The mere addition of the descriptive word “service” with the trademark SODEXO does not prevent a finding of confusing similarity with the Complainant’s marks.

The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Furthermore, the Panel notes the unrebutted claim of the Complainant that the disputed domain name is being redirected to a website which is impersonating the Complainant. A comparison of the website at the disputed domain name with the Complainant`s official website shows that the former is a slavish imitation, of the latter, considering the general layout and presentation of the products offered as well as the trademark used.

The consensus view of prior panels is that impersonation of the complainant is neither a use in connection with a bona fide offering of products or services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) See also section 2.5.1. (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”)

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark SODEXO is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Furthermore, the use of the descriptive term “service” in the disputed domain name, which refers to the Complainant’s activity or employees, indicates that the Respondent was aware of the Complainant at the time it registered the disputed domain name.

The Panel is satisfied that by redirecting the disputed domain name to a website whereby the Complainant’s services and trademarks are imitated, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (see section 3.1.3 of the WIPO Overview 3.0). Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

Thus, the Panel concludes that the disputed domain name was 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 <sodexoservice.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: July 2, 2021