SODEXO v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. D2023-1728

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SODEXO v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2023-1728

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 <sodexocare.com> 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 April 19, 2023. On April 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 2023 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 April 24, 2023.

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 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2023.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 1, 2023. 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.

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4. Factual Background

The Complainant is one of the largest companies in the world specialized in foodservices and facilities management, with 422 000 employees serving daily 100 million consumers in 53 countries.

SODEXO holds registrations that comprise the word “SODEXO” in numerous jurisdictions around the world, including, among others, the following trademark registrations:

- Canadian trademark SODEXO and device registration no. TMA811527 filed on November 9, 2007 and registered on November 9, 2011 under priority of the French trademark registration no. 073513766 of July 16, 2007, in international classes 09, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

- European Union Trade Marks SODEXO registration no. 006104657 and no. 008346462 filed
respectively on July 16, 2007, and June 8, 2009, and registered respectively on June 27, 2008 and
February 1, 2010 in international classes 9, 16, 35, 36, 37, 38, 39,40, 41, 42, 43, 44 and 45.

- International trademarks SODEXO registration no. 964615 and no. 1240316 filed and registered
respectively on January 8, 2008, and October 23, 2014, in international classes 9, 16, 35, 36, 37, 38,
39, 40, 41, 42, 43, 44, and 45.

The evidence submitted by the Complainant fully establishes that these rights are in effect and owned by the
Complainant.

The disputed domain name was registered on April 14, 2023 and at the time of filing directed to a parking page displaying links directly targeting the Complainant’s field of activity and its trademark.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name <sodexocare.com> incorporates the SODEXO trademark in its entirety with the addition of the descriptive term “care”.

The Complainant argues that the addition of the term “care” in the disputed domain name is inoperative to distinguish it from the Complainant’s trademark as in the disputed domain name the SODEXO trademark is dominant and keeps its individuality and attractive character.

The Respondent has registered the disputed domain name and is using it as a parking page to connect to the Complainant’s competitor’s websites.

The Complainant argues that due to the identical reproduction of the SODEXO trademark, the public will believe that the dispute domain name comes from the SODEXO group or is linked to SODEXO.

The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant requests that the disputed domain name be transferred to it.

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B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the 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.

A. Identical or Confusingly Similar

The Complainant has provided details of a number of the registered trademarks it owns for SODEXO, including the registration in respect of which full details have been provided above, which thereby establish its rights in this trademark.

As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s SODEXO trademark in its entirety followed by the term “care”. This additional term does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s trademark.

It is well established, in fact, that the addition of terms to a trademark in a domain name does not avoid confusing similarity. See e.g., eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.

Moreover, is well established that the gTLD “.com”, being a necessary component of a domain name, may
be disregarded for the purpose of comparison under this ground. See, F. Hoffmann-La Roche AG v.
Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear

Marshmallows, WIPO Case No. D2000-0003.

B. Rights or Legitimate Interests

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

There is nothing in the available case file to suggest that the Respondent is in any way affiliated with the seek registration of any domain name incorporating its trademarks.

The Respondent has not made any submissions or any demonstrations that it has rights or legitimate interests in the disputed domain name.

Past panels have found that in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.

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The Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering goods or services.

Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Panel concludes, noting that the Respondent lacks any rights or legitimate interests in the disputed domain name, that the second element of the Policy has, therefore, been met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent’s registration and use of the disputed domain name is in bad faith, which the Respondent did not rebut.

On the evidence adduced, it is inconceivable that the registrant of the disputed domain name was unaware of the Complainant’s name, trademark, reputation, and goodwill when the disputed domain name was registered.

In The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770, the panel held: “The Respondent knew or should have known of the existence of the Complainant, [as] the Complainant’s trademark [was] widely publicized globally and constantly featured throughout the Internet, and thus, the Panel decides that the disputed domain names were registered in bad faith”.

The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them trying to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant.

The Panel considers, in fact, that the disputed domain name has been used to divert Internet users to other sites offering services that compete with those of the Complainant.

Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent.

On this basis the Panel finds that the Complainant has satisfied the third element of the Policy, paragraph

4(a)(iii).

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 <sodexocare.com> be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: June 15, 2023