Sodexo v Carolina Rodrigues, Fundacion Comercio Electronico
WIPO Case No. D2024-2835
•06-09-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2024-2835
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <sodexobemefotscenter.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 July 11, 2024. On
July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 12, 2024, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on July
15, 2024, 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
July 15, 2024.
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 July 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2024.
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The Center appointed Frank Schoneveld as the sole panelist in this matter on August 19, 2024. 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
| specializing in food services and facilities management with 430,000 employees serving daily 80 million | The Complainant is the French company Sodexo (previously called SODEXHO ALLIANCE) founded in 1966, world’s Most Admired Companies” by Fortune Magazine. |
| The Complainant is established among others in Panama where it uses the domain name <sodexo.pa> registered in Panama where the Respondent is located. The Complainant’s SODEXO trademark is registered in more than 70 jurisdictions around the world including in: |
| JURISDICTION | REGISTRATION NUMBER | DATE OF REGISTRATION |
| International (WIPO) | 964615 | January 8, 2008 |
| France | 3513766 | December 21, 2007 |
| European Union | 008346462 | February 1, 2010 |
| Panama | 167188 | December 12, 2007 |
The Complainant operates, and promotes its activities through domain names (amongst others) such as
<sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>,
<sodexousa.com>, and <cn.sodexo.com>, as well as the domain name <sodexobenefitscenter.com>. The
domain name <sodexobenefitscenter.com> was registered by the Complainant April 13, 2012.
The disputed domain name was registered July 8, 2024, and was being used as a parking page with pay- per-click links connecting, among others, to websites of the Complainant’s direct competitors for food services jobs and meal vouchers.
The Respondent has not provided any response in these proceedings. The Respondent’s registered
address is in Panama and her name and organization has no resemblance or relationship with any part of
the disputed domain name. Since April 2020, the Respondent has been a respondent in proceedings
brought by the Complainant in at least eighteen previous WIPO domain name dispute proceedings under the
UDRP, all of which included as part of the disputed domain name the Complainant’s registered mark
SODEXO.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
The Complainant submits that the disputed domain name is composed of the Complainant’s registered mark
SODEXO (a purely fanciful word) associated with the expression “Bemefots Center” and that consumers
read and/or perceive the domain name as “Sodexo Benefits Center”. The Complainant submits that on a
qwerty keyboard, the “m” letter is placed right next to the “n” letter, and the “o” letter is right next to the “i”
letter, corresponding to an obvious typosquatting practice intended to create confusing similarity between the
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Complainant’s mark and the disputed domain name, especially when the Complainant has a very similar registered domain name <sodexobenefitscenter.com> used to connect to a website protected by a password for the Complainant’s employees for benefits services.
The Complainant contends that the Respondent:
- has no rights nor legitimate interests in the disputed domain name as it has no rights in SODEXO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights in the SODEXO registered mark.
- 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 registered mark SODEXO.
- 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 and to use it.
The Complainant lastly argues that the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms here, “bemefots” and “center” may bear on assessment of the second
and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although 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 difficult 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
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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The disputed domain name is used to host a parked page comprising PPC links, which does not represent a bona fide offering as the links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.
In the absence of any response from the Respondent in the circumstances mentioned above, the Panel can only conclude that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Complainant’s trademark SODEXO (incorporated into the disputed domain name) was registered
internationally in 2008, more than 15 years prior to registration of the disputed domain name. Also, since
2007, the Complainant’s SODEXO mark has been registered as a trademark in Panama where the
Respondent has her address. The Respondent was also a respondent in at least eighteen UDRP
proceedings with the Complainant for domain names that included the trademark SODEXO of the
Complainant. In those circumstances it is impossible for the Respondent, at the time the disputed domain
name was registered, not to have been aware of the Complainant’s trademark SODEXO. Therefore, the
Panel finds that the disputed domain name was registered in bad faith.
In the present case, the Panel notes also that the Respondent has been using the disputed domain name to resolve to a parking website with PPC links connecting, among others, to websites of the Complainant’s competitors for food services jobs and meal vouchers. Such conduct is clearly an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the website. This is evidence of bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
Bad faith registration and use of the disputed domain name is also affirmed by the Respondent’s pattern of conduct. The Respondent has engaged in a clear pattern of registering domain names corresponding to (or including) trademarks held by the Complainant, and between 2020 and 2024 the Respondent has been found to have registered those domain names in bad faith on at least eighteen prior occasions.
The Panel finds that the Complainant has established the third element of the Policy.
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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 <sodexobemefotscenter.com> be transferred to the Complainant.
/Frank Schoneveld/
Frank Schoneveld
Sole Panelist
Date: September 6, 2024
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