WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-3034
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 the Registrar
The disputed domain name <sodexohotmail.com> (the “Domain Name”) 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 September 15, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 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 (“the Amended Complaint”) on September 22, 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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed Warwick Smith as the sole panelist in this matter on November 16, 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, founded in 1966. It is one of the world’s largest companies specializing in food services and facilities management, serving 100 million consumers in 64 countries.
The Complainant provides “on-site” services, including restaurant and catering services, reception services, technical maintenance and repair, housekeeping and laundry, and waste management. In addition, it provides benefits and rewards services (including service vouchers and cards) for private and public organizations, and a variety of personal and home services (including childcare and concierge services).
For the 2020 fiscal year, the Complainant’s consolidated revenues reached 19.3 billion Euros; 43 per cent of that revenue was earned in North America, 40 per cent in Europe, and 17 per cent in the rest of the world.
The Complainant originally traded as “Sodexho”, but from 2008 it has been trading as “Sodexo”, using the word mark SODEXO as well as a number of figurative “Sodexo” marks.
The Complainant holds registrations for the word mark SODEXO, in a number of international classes, in the European Union (dating from June 2009 1), and internationally (dating from October 20142 ). Under the international registration, the word mark is protected in Iran (Islamic Republic of), Mozambique, and the United Kingdom.
In addition, the Complainant holds registrations for a number of figurative “Sodexo” marks, including a mark featuring the word “Sodexo” in stylized script with a single star above the “x” and one limb of the “x” colored red (“the star mark”). The star mark has been registered in the European Union with effect from July 2007, and internationally with effect from January 2008.
The Complainant markets its products through a number of websites, including websites at <sodexo.com>, <sodexousa.com>, <sodexo.fr>, and <sodexo.pa> (the Panama cctld). The Complainant produced several screenshots taken from its (Spanish language) website at <sodexo.pa>, effectively confirming that it has carried on business in Panama under the star mark.
The Complainant referred to a number of previous UDRP decisions where it has been the complainant, in which its SODEXO mark (or the star mark) have been referred to by expressions such as “well known”, “highly distinctive”, and “well established and known worldwide”.3
The Domain Name was registered on August 16, 2021. A screenshot of the website to which the Domain Name has since resolved, shows that it was being used as a parking page, with click-on links including “Employee rewards and recognition”, the (Dutch) expression “Vacatures”, and the (Portuguese) expressions “Comida”, and “Cartao Alimentacao”.
The Complainant has issued complaints against the Respondent in no fewer than 10 previous UDRP cases.4 On each occasion, the panel has ordered the transfer of the disputed domain name to the Complainant.
5. Parties’ Contentions
A. Complainant
The Domain Name is confusingly similar to the SODEXO mark and/ or the star mark in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name. She is not commonly known by the Domain Name, and she has no affiliation, association, sponsorship or connections with the Complainant. She has no rights in the Sodexo corporate name, trade name, shop sign, or in the SODEXO mark or the Domain Name, and she has not been authorized, licensed, or otherwise permitted by the Complainant to register the Domain Name and use it.
The Domain Name was registered and is being used in bad faith. The Respondent undoubtedly knew of the Complainant’s existence when she registered the Domain Name, and she was also informed of the Complainant’s activities in connection with its SODEXO mark and the star mark. “Sodexo” is a fanciful expression, and the Respondent could not have chosen it unless she was seeking to create an association with the Complainant’s activities and its “Sodexo” name and marks. She knew she had no rights or legitimate interests in respect of the Domain Name, and that she could not lawfully use it.
Previous WIPO UDRP panel decisions have recognized that a respondent’s actual knowledge of the complainant’s trade marks and activities may provide a basis for an inference of bad faith on the respondent’s part.5 In this case, the Complainant’s previous successful UDRP proceedings against the Respondent make it clear that she knew about the Complainant and its business carried on under its SODEXO and star marks when she registered the Domain Name.
The Respondent has been using the Domain Name for the purpose of creating confusion with the Complainant’s marks to divert or mislead third parties for the Respondent’s illegitimate profit. Specifically, she has made an intentional attempt to attract, for commercial gain (“pay-per-click” revenue from links to the third-party websites from the website at the Domain Name), Internet users to websites competing with the Complainant, and to other unrelated websites, by creating a likelihood of confusion with the Complainant’s well-known marks.
Alternatively, the registration and use of the Domain Name by the Respondent creates a risk of harm to the Complainant’s goodwill in its company name and in its marks, by confusing consumers and potential consumers and interfering with the Complainant’s business by frustrating attempts by Internet users to reach SODEXO official websites.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following –
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the word mark SODEXO and the star mark in the European Union, and internationally under the Madrid System. Those registrations sufficiently establish that the Complainant has rights in the SODEXO word mark and in the star mark, for the purposes of paragraph 4(a) (i) of the Policy.
Turning to the “identical or confusingly similar” aspect of paragraph 4(a)(i) of the Policy, the first point is that the “.com” suffix is not taken into account in the comparison that the paragraph requires.6 The only issue to be decided under paragraph 4(a)(i) is whether the “sodexohotmail” part of the Domain Name is confusingly similar to the Complainant’s SODEXO mark or the star mark.
The word mark, and those parts of the star mark that are capable of being reflected in a domain name, are incorporated in full within the Domain Name. That is often accepted by UDRP panels as sufficient proof of confusing similarity under paragraph 4(a) i). The WIPO J Overview 3.0 states at section 1.8:
“Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
In this case, the SODEXO mark and the star mark are clearly recognizable within the Domain Name (as far as the star mark is concerned, the dominant part of it is the expression “Sodexo” - the stylized “x” and the star over the “x” do not convey to the reader any significant additional meaning, or impression).
As for the word “hotmail”, Internet users would immediately associate the word with Microsoft’s widely-used Hotmail email service. Adding a third party trademark like GMAIL or HOTMAIL to the Complainant’s trade mark (where the Complainant’s trademark is recognizable within the disputed domain name) is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark under the first element (see section 1.12 of the WIPO Overview 3.0).
. Many Internet users familiar with the Complainant and its mark would be likely to assume (incorrectly) that the Domain Name must resolve to a website of the Complainant that was somehow concerned with email communication by Hotmail, or to a website involving some collaboration or association between the respective owners of the SODEXO and HOTMAIL marks.
The Complainant has therefore made out its case on the first element. The Domain Name is confusingly similar to both the SODEXO mark and the star mark, in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are –
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or
(ii) Where [the respondent] (as an individual business or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
WIPO Overview 3.0 states the following on the burden of proof under paragraph 4(a)(ii) of the Policy:7
“While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, there is nothing to suggest that the Respondent (or any entity associated with her) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized her to use its marks, whether in a domain name or otherwise. There appears to be no possible claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy.
Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Name, or any name corresponding to it, in connection with any bona fide offering of goods or services. The Domain Name appears to have been used only to derive revenue from pay-per-click parking pages, by misleading Internet users into believing that any website at the Domain Name will be associated with the Complainant, thus capitalizing on the Complainant’s reputation and goodwill in its SODEXO and star marks. Such use could never amount to a bona fide offering of goods or services.8
Nor, on the evidence produced, could the Respondent’s use of the Domain Name support a claim to rights or interests based on a “legitimate” non-commercial, or “fair”, use of the Domain Name under paragraph 4(c) (iii) of the Policy. Deliberate, unauthorized use of a trade mark owner’s mark in a domain name for commercial gain could not, at least in normal circumstances, amount to a “fair” use of a disputed domain name, and nor could such use be described as a legitimate noncommercial use. There does not appear to be any arguable right or legitimate interest under paragraph 4(c)(iii) of the Policy.
For those reasons, the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move the onus of showing that some right or legitimate interest exists to the Respondent. In the absence of a response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted. The Panel therefore finds for the purposes of paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith –
(i) Circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
The Panel accepts that the Complainant has also proved this element of the Amended Complaint.
First, the Domain Name is confusingly similar to the Complainant’s SODEXO word mark and the star mark, and the Respondent has no rights or legitimate interests in respect of the Domain Name.
Next, there is no possible argument that the Respondent might not have known about the Complainant and its marks when she registered the Domain Name. She has known of the Complainant from at least March 2020, when a UDRP panel ordered the transfer to the Complainant of a domain name the Respondent had registered. Indeed, by the time she registered the Domain Name there had been no fewer than 10 panel decisions under the Policy transferring to the Complainant domain names registered by the Respondent. There can be little doubt in those circumstances that the Respondent has been attempting to exploit the value of the Complainant’s marks for gain, as she has done repeatedly in the past.
The circumstances of this case fall squarely within paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain (pay-per-click or similar revenue), Internet users to the website at the Domain Name, by creating a likelihood of confusion with the Complainant’s SODEXO and star marks, as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name has resolved, or to certain products or services offered through that website.
There are substantial general indicators of bad faith registration and use present in this case. First, the Panel accepts the Complainant’s submission that bad faith registration and use may be found more readily where a disputed domain name resolves to a parking page containing sponsored links which are clearly based on the trade mark value of the Domain Name.9 In this case, one of the click-through links on the website to which the Domain Name has resolved was “Employee Rewards and Recognition”, which appears to be one of the Complainant’s services marketed under the heading: “Employee Benefits to attract, engage and retain employees”. That link appears to have been deliberately chosen to exploit the value of the Complainant’s SODEXO mark, and / or the star mark, which are registered in the European Union and internationally in respect of “Business management and organization consultancy”, “personnel management consultancy”, and “personnel recruitment” (among other services in international class 35).
More generally, the registration and use in this case appears to be a prime example of someone using a name connected with a well-known service and product, when that person has no connection with the service or product (the kind of opportunistic bad faith registration and use referred to in the Veuve Clicquot case cited by the Complainant10 ).
Add to those considerations the Respondent’s track record as an (apparently) serial abusive domain name registrant, and her failure to reply to the Amended Complaint, and the finding of bad faith registration and use is inevitable.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and as requested by the Complainant in the Amended Complaint, the Panel orders that the Domain Name, <sodexohotmail.com>, be cancelled.
Warwick Smith
Sole Panelist
Date: November 23, 2021
1 European Trademark Registration No. 008346462, registered on February 1, 2010.
2 International Trademark Registration No. 1240316, registered on October 23, 2014.
3 On the view to which the Panel has come on the question of the Respondent’s knowledge of the Complainant and its marks when she registered the Domain Name, it is not necessary to do more than to note that the Complainant referred to approximately 15 such UDRP decisions.
4 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; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580; SODEXO v. Carolina Rodrigues, WIPO Case No. D2020-2475; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3426; Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0237; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0316; Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0485; , and Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1735 .
5 Referring to LEGO Juris A / S v Reiner Stotte, WIPO Case D2010-0494, Caixa D’Estalvis / Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; and Accor So Luxury v Youness Itsmail, WIPO Case No. D2015-0287.
6 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes at section 1.11.] that the gTLD (or ccTLD as the case may be) is a standard registration requirement, and as such is disregarded when applying the confusing similarity test under paragraph 4(a)(i) of the Policy.
7 WIPO Overview 3.0, at section 2.1.
8 WIPO Overview 3.0states at section 2.9:
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation of the complainant’s mark or otherwise mislead Internet users…..”
9 Champagne Lanson v Development Services/Mail Planet.com Inc, WIPO Case No. D2006-006 (pay-per-click landing pages not legitimate where sponsored links are based on the trade mark value of the domain name).
10 Veuve Clicquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co, WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).