WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Privacy Service Provided by Withheld for Privacy ehf/ Leopoldi Yannik, Sodexo

Case No. D2021-4345

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Leopoldi Yannik, Sodexo, Belgium.

2. The Domain Name and Registrar

The disputed domain name <belgique-sodexo.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 28, 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 December 31, 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 January 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 15, 2022.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on February 23, 2022. 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, Sodexo (formerly called SODEXHO ALLIANCE), is a French limited company, which was founded in 1966. SODEXO is one of the largest companies in the world specialized in foodservices and facilities management, with 420 000 employees serving 100 million consumers in 64 countries. The Complainant provides a wide range of services under its trade name and mark “SODEXO” (formerly “SODEXHO”).

Inter alia the Complainant offers on-site services related 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 and space management. Furthermore, the Complainant offers benefit and reward services by issuing service vouchers and cards for private and public organizations. Also, the Complainant offers personal and home service including childcare, tutoring and adult education, concierge services and home care for dependent persons.

From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, it simplified the spelling of its mark and name to SODEXO.

The Complainant owns numerous domain names corresponding to and/or containing “Sodexo” or “Sodexho”. The Complainant promotes its activities amongst others, under the following domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, <sodexho.com>.

In addition to numerous national trademarks, the Complainant owns the following European Union and International registrations:

The disputed domain name <belgique-sodexo.com> was registered on November 19, 2021. Since then, the Respondent used the website as a parking page with links to third party commercial offerings that broadly fall within the business field of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore meeting the first element of the UDRP according to paragraph (a)(i) of the Policy. The Complainant states that it is the registered owner of the well-known SODEXO/SODEXHO trademarks worldwide, and the disputed domain name identically adopts the Complainant’s SODEXO trademarks with the additional geographical term “belgique”. The Complainant further states that the generic top-level domain in a domain name is not taken into account in the assessment of confusing identity or similarity. The Complainant also claims that the use of the generic geographical indication “belgique” in the disputed domain name is not sufficient to eliminate a confusing similarity under the first element of the UDRP. Finally, the Complainant asserts that the reasonable Internet-user visiting the website under the disputed domain name will expect to see a website that is commercially linked to the owner of the SODEXO/SODEXHO trademarks.

The Complainant argues that that the Respondent has no rights, no legitimate interests nor is otherwise permitted to register or use the disputed domain name incorporating the SODEXO/SODEXHO trademarks of the Complainant. Therefore, the second element of the Policy is met.

According to the Complainant, the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO/SODEXHO. Although the disputed domain name was registered indicating the name of the Complainant’s Belgian subsidiary, the registration was in fact not carried out by the Complainant. Rather, the Respondent had illicitly provided the data of the Complainant’s Belgian subsidiary in order to obtain the disputed domain name as a case of identity theft.

The Complainant claims 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 of its subsidiaries or affiliated companies to register the disputed domain name and to use it.

The Complainant further asserts according to paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered and used in bad faith and that the third element of the UDRP was met. The Complainant argues that the SODEXO/SODEXHO brand was widely known. Thus, the Respondent was or must have been aware of the Complainant’s SODEXO/SODEXHO marks knowing he had no legitimate interest in the disputed domain name. The Complainant concludes that the disputed domain name was solely chosen to create an association with the Complainant in the perception of the consumers.

According to the Complainant, it is evident that the Respondent was aware of the Complainant’s trademark, in particular since he applied for the disputed domain name falsely using SODEXO as name of the organization allegedly registering it. This shows not only that the Respondent knew about the Complainant’s trademark, but also that the Respondent intended to profit specifically from the Complainant’s good reputation by using the disputed domain name in order to attract Internet users and to incite them to click on third party commercial links provided on the website into which the disputed domain name resolved. Hence, the Complainant concludes that the disputed domain name was registered and used to generate commercial gain by misleading Internet users/customers, which constitutes a case of bad faith.

According to paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that:

(i) the disputed 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 in respect of the disputed domain name and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name [... ]”.ln the present case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case. ln the event of default, under the Rules, paragraph 14(b) the Panel shall draw such inferences therefore as it considers appropriate. As stated by numerous UDRP panels (e.g., Viacom lnternational lnc. v. lr Suryani, WIPO Case No. D2001-1443), “[if] the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, th[e] Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied, by the Complainant [...] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

ln the present administrative proceeding, the Respondent has chosen not to submit a response. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as it deems applicable.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. ln this case, the Complainant has demonstrated registered trademark rights in the mark -SODEXO which predate the registration of the disputed domain name.

The disputed domain name contains the Complainant’s trademark “SODEXO” in its entirety and differs from it only by the addition of the geographical term “belgique” and the gTLD “.com”. The addition of the gTLD suffix does not dispel confusion. The gTLD of the disputed domain name is to be ignored for the purposes of assessing confusing similarity as it is a functional requirement of the domain name system, which is the common view of UDRP panelists and held in earlier cases such as DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozuris, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, lnc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

The additional term “belgique” is a geographical term clearly referring to the country of Belgium. lt is common practice for companies operating in various countries or continents to indicate a particular geographical area of operations by combining their company name or trademark with the country name, thereby enabling the Internet user to immediately identify the website of the company offering the goods or services particularly for the country of residence of the internet user. For this reason, the Panel concludes that the geographical term “belgique” is solely descriptive. The use of the added geographical term does not change the overall impression of the disputed domain name as being dominated by the SODEXO mark and does not prevent a finding of confusing similarity (See Microsoft Corporation v. Hassan Pennock, WIPO Case No. D2005-1020; Dell lnc. v. Dl_4747995, WIPO Case No. D2007-0803; The Stanley Works and Stanley Logistics, lnc. v. Camp Creek Co., lnc., WIPO Case No. D2000-0113).

Hence, the disputed domain name is confusingly similar to the Complainant’s trademark SODEXO.

Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of proof on the Respondent (See Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion lnnovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire lnternet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In the absence of any evidence to the contrary, the Panel accepts that the Respondent is not a licensee nor associated in any way with the Complainant that could give rise to any license, permission or other right by which the Respondent could own or legitimately use the Complainant’s SODEXO mark within the disputed domain name. The Panel is therefore of the view that a prima facie case has been established and it is on the Respondent to prove it has rights or legitimate interests to the disputed domain name.

Hence, the burden of proof is on the Respondent. But the Respondent did not show any proof of rights or legitimate interest in the disputed domain name. The fact that the Respondent in his registration of the disputed domain has added the term “SODEXO” to his name is no evidence to demonstrate that the Respondent has become commonly known by the disputed domain name.

The Panel notes that the Respondent has used the disputed domain name as a parking page with a number of sponsored links. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to such sponsored links. While parking pages may be permissible in some circumstances, under paragraph 2.9 of WIPO Overview 3.0, a parking page does not represent a bona fide offering that would confer rights or legitimate interests in a domain name. This is especially the case where a disputed domain name was registered with a trade mark owner’s mark in mind in the expectation that confused Internet users searching for the trade mark owner will be directed to the Respondent’s parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA, WIPO Case No. D2007-1143). In this case, however, it must be assumed that the Respondent held such expectations, so that a legitimate interest on his part is absent.

Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the Respondent registered and used the disputed domain name in bad faith.

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating the four factors set forth under paragraph 4(b) in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;

(ii) the registrant 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 registrant has engaged in a pattern of such conduct;

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, lnternet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.

It is a well-established principle that registration of a domain name that is confusingly similar to a well-known trademark by any entity that does not have a relationship to that mark can amount to sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The Complainant has brought evidence that its trademarks are widely known to a substantial part of consumers due to intense use and trade activities made under the trademark, which has not been contested by the Respondent. Considering this next to the fact that the Respondent registered the disputed domain name explicitly using “Sodexo” as name of the organization allegedly registering it, the Panel concludes that the Respondent was well aware of the SODEXO trademarks upon registration. Also, SODEXO is a fanciful and distinctive term, and no explanation has been provided by the Respondent as to how the Respondent came up with the confusingly similar disputed domain name.

It cannot be mere coincidence that either the related links that appear on the parking page to which the disputed domain name resolves lead to services which, in a broader sense, fall within the business field of the Complainant. The Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the disputed domain name with the Complainant’s mark in mind, in order to misdirect Internet users who are searching for the Complainant to the Respondent’s parking page. Using a domain name in this way to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant’s goodwill, is evidence of bad faith registration and use under the Policy (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

The Panel is of the opinion that the Respondent deliberately registered a domain name confusingly similar to the Complainant’s trademarks with the intent to use it to divert Internet users to the Respondent’s parking page. As stated by the Complainant, the Complainant has numerous domain names that also contain the SODEXO mark combined with a geographic indication, so users are expected also to land on the domain claimed by the Respondent. Diverting users is beneficial for the Respondent’s commercial gain since the Respondent is most likely to receive so called pay-per-click revenue from those visitors who click through to the advertising on the site (see e.g. Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).

The use of a privacy protection service, as was employed in the present case, additionally indicates bad faith (Philip Morris Products S.A. v. Registration Private / Domains By Proxy, LLC / Guil Vugman, WIPO Case No. D2018-2749).

For all of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) 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 <belgique-sodexo.com> be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: March 9, 2022