WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Contact Privacy Inc., Customer 0162923862 / Milen Radumilo
Case No. D2021-4180
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Contact Privacy Inc., Customer 0162923862, Canada / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <sodexoportal.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2022.
The Center appointed William R. Towns as the sole panelist in this matter on January 12, 2022. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of impartiality and independence, as required, by the Center to insure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a facilities management company established in 1966 and headquartered in Issy-les-Moulineaux, France. The Respondent has operations in 64 countries around the world, and provides a combination of services including on-site food, facilities management, benefits and rewards, and personal and home services. With over 420,000 employees, the Complainant serves millions of consumers and is one of the largest companies in the world.
The Complainant since as early as 1966 has traded under the SODEXHO name, and in 2008 simplified the spelling of its trading name to SODEXO. The Complainant has registered its SODEXO and SODEXHO marks in jurisdictions throughout the world, including among the following:
-SODEXHO (figurative), International Trademark Registration (“Reg.”) No. 689106, registered January 28, 1998;
-SODEXHO (figurative), International Trademark Reg. No. 694302, registered June 22, 1998;
-SODEXHO (figurative) and design, Canada (“CA”) Trademark Reg. No. TMA654335, applied for October 13, 2000, and registered December 5, 2005;
-SODEXO (figurative) and design, CA Trademark Reg. No. TMA811527, applied for September 11, 2007, and registered November 9, 2011;
-SODEXO (figurative), International Trademark Reg. No. 964615, registered January 8, 2008;
-SODEXHO (figurative), European Union Trade Mark (“EUTM”) No. 006104657, applied for July 16, 2007, and registered June 27, 2008;
-SODEXO (figurative), EUTM Reg. No. 006104657, applied for July 16, 2007, and registered June 27, 2008;
-SODEXO (word), EUTM Reg. No. 008346462, applied for June 8, 2009, and registered February 1, 2010;
-SODEXHO (figurative), EUTM Reg. No. 011138501, applied for August 23, 2012, and registered January 22, 2013;
-SODEXO QUALITY OF LIFE SERVICES (figurative), EUTM Reg. No. 011138501, applied for August 23, 2012, and registered January 22, 2013);
-SODEXO QUALITY OF LIFE SERVICES (figurative), International Trademark Reg. No. 1195702 registered October 10, 2013; and
-SODEXO (word), International Trademark Reg. No. 1240316, registered October 23, 2014.
Prior UDRP panel decisions have recognized that the Complainant’s SODEXO mark has acquired a substantial reputation and is well known. See, e.g., Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580 (complainant’s business is of international size and scope and has developed substantial reputation recognized by UDRP panels).1
The Complainant also has registered numerous domain names reflecting the SODEXO and SODEXHO marks, including <us.sodexo.com>, <sodexo.com>, <sodexousa.com>>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>.
The disputed domain name was registered on October 31, 2022. At the time of filing the Complaint, the Complainant submits that the Respondent pointed the disputed domain to a webpage connecting to a malicious site purporting to be an official Windows page, which fortunately was blocked by Windows Defender due to suspicious activity.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s SODEXO mark. The Complainant maintains that the SODEXO mark is well known and recognized worldwide, and that the inclusion of the word “portal” in the disputed domain name is not dominant and thus is distinguishable from the Complainant’s SODEXO mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has no affiliation, association, sponsorship or connection with the Complainant, and has neither been commonly known by the disputed domain name nor otherwise authorized, licensed or permitted by the Complainant to register or use the disputed domain name. The Complainant further remarks that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith by deliberately creating a likelihood of confusion as to the sponsorship, affiliation or endorsement of the Respondent’s website, exposing innocent and unsuspecting visitors to the Respondent’s website to viruses, malwares, and “mouse-trapping” techniques.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s well-known SODEXO mark, in which the Complainant has established rights through registrations and continuous and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. 2
Applying this comparison, the Complainant’s SODEXO mark is recognizable in the disputed domain name. 3 When as here the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the Complainant’s mark for purposes of UDRP standing.4 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. The Respondent’s inclusion in the disputed domain name of the term “portal” does not prevent a finding of confusing similarity of the disputed domain name to the Complainant’s SODEXO mark.5 Top-Level Domains (“TLDs”) such as “.com” generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s SODEXO mark. The Respondent nevertheless registered the disputed domain name, which the Panel has found to be confusingly similar to the Complainant’s well-known mark, and which the Respondent has pointed to a website potentially exposing Internet visitors to the website to potential viruses and malwares.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The record is convincing that the Respondent was aware of the Complainant and had the Complainant’s distinctive SODEXO mark firmly in mind when registering the disputed domain name. The Panel is persuaded from the record that the Respondent in all likelihood registered the disputed domain name with the intention of directing it to a malicious website. The use of a domain name for such illegal activity can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13 and cases cited therein.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication in the record that the Respondent ever has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. 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 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct constitutes bad faith registration and use of the disputed domain name within the meaning of the Policy. It is clear beyond cavil that the Respondent had the Complainant’s distinctive and well-known SODEXO mark firmly in mind when registering the disputed domain name, which the Respondent in bad faith has deliberately and maliciously sought to exploit. The use of the term “portal” in combination with the Complainant’s mark reinforces the Panel finding that the Respondent sought to mislead Internet users to its site in an attempt to distribute malware, seeing as the added term could be seen as descriptive of a page for registration or entry to the Complainant’s services.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <sodexoportal.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 26, 2022
1 See also Sodexo v. Domaines By Proxy/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085; Sodexo v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2021-0472; Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0485; Sodexo v. Daniela Ortiz, WIPO Case No. D2021-0628; Sodexo v. bin quan wang, wang bin quan, WIPO Case No. D2021-0629; Sodexo v. Yang Zhichao, WIPO Case No. D2021-0902; Sodexo v. Lloyd Group., WIPO Case No. D2021-1214.
2 WIPO Overview 3.0, section 1.7.
3 See WIPO Overview 3.0, section 1.7.
4 See WIPO Overview 3.0, section 1.7 and cases cited therein.
5 See WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
6 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.