Sodexo v Domains By Proxy, LLC / Carolina Rodrigues, Fundacion

WIPO Case No. D2022-0210

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion
Comercio Electronico

Case No. D2022-0210

1. The Parties

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

Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio

Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexobenefitcente.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 January 21, 2022. On January 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2022, 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 Complainant on January 26, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on January 27, 2022.

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 Respondent of the Complaint, and the proceedings commenced on January 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2022. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on February 18, 2022.

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The Center appointed David Perkins as the sole panelist in this matter on March 1, 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

4.A. Complainant

4.A.1. Complainant was founded in 1966 by Pierre Bellon. It is one of the largest companies in the world
specialising in the provision of foodservices and facilities management. It has 420,000 employees serving

100 million consumers in 64 countries. Its consolidated revenues for the year 2020 were EUR 19.3 billion.

4.A.2. The amended Complaint provides a summary of its On-Site Services, Benefits & Rewards Services
and Personal & Home Services, particulars of which are contained in its website, the link to which is provided
in the amended Complaint. Those services are provided under and by reference to its SODEXO trademark.
Prior to 2008 Complainant promoted that business under the name and mark SODEXHO. In 2008

Complainant simplified its name and trademark to SODEXO.

The SODEXO and SODEXHO trademarks

4.A.3. Complainant says that these marks are protected by registration in 64 countries. Annexed to the

amended Complaint is the selection of those registered trademarks summarised below:

Country	Registration	Mark	Classes of goods	Dates of Application and
Number	and services	Registration
Panama*	167186	SODEXO	9	Registered December 12, 2007
International	IR 964,615	SODEXO	9, 16 and 35-45	Registered January 8, 2008**
International	IR 1,240,316	SODEXO	9, 16 and 35-45	Registered October 23, 2014***
EUTM (European	008346462	SODEXO	9, 16 and 35-45	Registered February 1, 2010
Union Trade
Mark)
EUTM	006104657	SODEXO	9, 16 and 35-45	Registered June 27, 2008
EUTM	011138501	SODEXO	9, 16 and 35-45	Registered January 22, 2013
QUALITY OF LIFE SERVICES

Of the above, 167186-01 and IR 964,615 marks have an asterisk above the letter ‘X’.
* Respondent has an address in Panama.
** IR 964,615 is registered in 35 countries.
*** IR 1,240,316 is registered in 3 countries.

Annexed to the amended Complaint are the following registered trademarks for the mark SODEXHO and a cluster of stars above the word SODEXHO:

Country	Registration	Mark	Classes of goods	Dates of Application and
Number	and services	Registration
International	IR 689106	SODEXHO	16, 36, 37, 39, 41	Registered January 28, 1998
and 42
International	IR 694302	SODEXHO	9	Registered June 22, 1998

Both IRs above are registered in the same 37 countries.

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4.A.4. The amended Complaint states that Complainant is also the registrant of numerous domain names corresponding to and/or containing SODEXO or SODEXHO. Complainant promotes its activities among, inter alia, the following domain names: <sodexo.com>; <sodexo.pa>; <uk.sodexo.com>;

<sodexoprestige.co.uk>; <sodexo.fr>; <sodexoca.com>; <sodexousa.com>; <cn.sodexo.com>;

<sodexho.fr>; and <sodexho.com>.

4.A.5. The amended Complaint also references a number of Decisions under the Policy - 17 in all - in which
its SODEXO trademark has been held without any doubts to be a well-known mark, to be a highly distinctive,
established and well-known name worldwide, to have a very substantial reputation and goodwill, and to have

widespread fame.

4.B. Respondent

4.B.1. In the absence of a Response, what is known of Respondent is set out in the amended Complaint and

its annexes.

4.B.2. The disputed domain name was registered on December 23, 2021.

4.B.3. Respondent is using the disputed domain name as a parking page, a print out of which is contained in the amended Complaint. The amended Complaint explains that the disputed domain name is being used as a parking page displaying pay-per-click (“PPC”) links to Complainant’s competing websites and to other

unrelated websites.

5. Parties’ Contentions
5.A. Complainant

5.A.1. Identical or Confusingly similar

5.A.1.1. Complainant asserts that the disputed domain name is identical or confusingly similar to its

SODEXO and SODEXHO trademarks.

5.A.1.2. Complainant asserts, on the basis of the facts summarised in paragraphs 4.A.1 to 4.A.5 above, that

its SODEXO mark is a well-known mark.

5.A.1.3. Complainant points to the fact that the disputed domain name contains its well-known SODEXO
mark in its entirety with the addition of the terms “benefit” and “cente”, which it says is clear misspelling of

“center”. This is, Complainant says, a typosquatting technique.

5.A.1.4. Complainant’s case is that addition of the words “benefit” and “cente” is insufficient to distinguish the
disputed domain name from its SODEXO and SODEXHO marks. Complainant adds that, addition of those
words, only enhances the risk of confusion or association with its marks which are used for its employee
benefits and rewards services. The amended Complaint cites a number of Decisions under the Policy which
have held that the addition of a generic or descriptive term to complainant’s mark will not avoid a finding of

confusing similarity.

5.A.1.5. The amended Complaint references 10 cases under the Policy where the following 16 disputed

domain names have been found to be confusingly similar to the SODEXO mark:

<sodexobenefit.com>; <sodexobenfits.com>; <sodexobenefits.com>; <sodexobenefifscdnter.com>*;
<sodexobenefitscernter.com>; <sodexobenefitsconter.com>; <sedoxobenfetiscenter.com>;
<sedoxobenefotscenter.com>*; <sodexobenfitscenter.com>; <sodexobenefictscenter.com>;
<sodexobenifitscenmter.com>; <wwwsedoxobenefitscenter.com>; <<sodexobenefitscsnter.com>*;
<sodexobenefgitcenter.com>*; <sodexobenifitcenter.com>*; and <sodexobefitscenter.com>.

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* The disputed domain names marked with an asterisk were registered by Respondent in this case.

5.A.2. Rights or Legitimate Interests

5.A.2.1. Complainant states that it has not licensed or otherwise authorised use by Respondent of the

disputed domain name.

5.A.2.2. Nor, Complainant says, do any of the circumstances set out in paragraph 4(c) of the Policy, which

demonstrate rights or legitimate interests in the disputed domain name, apply in this case.

5.A.3. Registered and Used in Bad Faith

5.A.3.1. First, Complainant says that, in the light of the well-known status of the SODEXO and SODEXHO
marks, Respondent must have clearly known of the existence of those marks when she registered the
disputed domain name that she could have no rights or legitimate interests in the disputed domain name,

and that she could not lawfully use it.

5.A.3.2. Second that, owing to the purely fanciful nature of the SODEXO mark, nobody could have
legitimately chosen it, particularly in combination with the words “benefit” and “cente”, unless seeking to
create an association with Complainant’s SODEXO mark and with the services provided by Complainant

under that mark.

5.A.3.3. Third, Complaint points to Respondent having been the respondent in UDRP cases where disputed
domain names including the SODEXO mark have been transferred. In addition to the domain names
asterisked in paragraph 5.A.1.5 above, those cases concerned the following domain names:

<sodexorewardhib.com>; <benefitssodexo.com>; <sedoxovoya.com>; <sodexeo.com>; <sedoxousadefaulthome.com>; <sedoxocareermanorcare.com>; <sedoxowesley.com>; <sedoxoyway.com>; and <sedoxoreeardhub.com>.

5.A.3.4. Fourth, Respondent’s use of the disputed domain name referred to in paragraph 4.B.3 above falls,
Complainant says, within paragraph 4(b)(iv) of the Policy.

bona fide en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.

5.A.3.5. Further, Complainant says that such use for PPC links is not a use under paragraph 4(c)
of the Policy where, as in this case, the links compete with or capitalise on the reputation and goodwill of

Complainant’s mark. Complainant cites in support the Decisions in Champagne Lanson v. Development

5.A.3.6. Fifth, Complainant says that Respondent’s registration and use of the disputed domain name falls

within paragraph 4(b)(iii) of the Policy.

5.A.3.7. Sixth and finally, Complainant says that use of the disputed domain name may not only be confusing

for consumers but can also create dilution of the SODEXO mark.

5.B. Respondent

5.B.1. As noted above, no Response has been filed by Respondent.

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6. Discussion and Findings

6.1. The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to
succeed in an administrative proceeding

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which Complainant has rights; and

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found
by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed

domain name in issue.

6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if

found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.A. Identical or Confusingly Similar

6.A.1. Complainant clearly has rights in the SODEXO trademark, which has been held in numerous

Decisions under the Policy to be a well-known mark.

6.A.2. Further, the disputed domain name incorporates that mark in its entirety and addition of the words

“benefit” and “cente” do not avoid confusing similarity.

6.A.3. Consequently, the amended Complaint meets the two requirements of paragraph 4(a)(i) of the Policy.

Complainant’s case summarised in paragraph 5.A.1 above is well made out.

6.A.4. It is not necessary in the Panel’s view to consider whether the disputed domain name is also
confusingly similar to the SODEXHO mark, since the amended Complaint succeeds in relation to the

SODEXO mark.

6.B. Rights or Legitimate Interests

6.B.1 Complainant’s case summarised in paragraphs 5.A.2 and 5.A.3.1 is also well made out. Accordingly,

the amended Complaint succeeds under paragraph 4(a)(ii) of the Policy.

6.C. Registered and Used in Bad Faith

6.C.1. The facts summarised in paragraph 5.A.3 above overwhelmingly demonstrate that Respondent has registered and used the disputed domain name in bad faith. Additionally, the evidence is that, with respect to the SODEXO mark, Respondent is a serial typosquatter.

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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 <sodexobenefitcente.com> be transferred to Complainant.

/David Perk ins/
David Perkins
Sole Panelist
Date: March 15, 2022