Sodexo v Ellen DiBenedetto, iqs

WIPO Case No. D2023-4851

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Ellen DiBenedetto, iqs

Case No. D2023-4851

1. The Parties

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

The Respondent is Ellen DiBenedetto, iqs, United States of America (“U.S.”)

2. The Domain Name and Registrar

The disputed domain name <sodcxo.com> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22,

2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On November 24, 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org))
and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 27, 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 November 30, 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 paragraph 5, the due date for Response was December 24, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 26, 2023.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 3, 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

The Complainant was founded in 1966 and is specialized in food services and facilities management.
The Complainant owns many trademark registrations for SODEXO worldwide such as the following:

1.        International Trademark Registration No. 1240316, registered on October 23, 2014;

2.        European Trademark Registration No. 008346462, registered on February 1, 2010; and

3.        European Trademark Registration No. 006104657, registered on June 27, 2008.

The Complainant also has many domain names which contain the trademark SODEXO such as

<sodexo.com>, <sodexo.fr> and <sodexousa.com>.

The disputed domain name was registered on November 17, 2023, and resolves to an inactive website.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name is a misspelling of the

Complainant’s trademark as it replaces the letter “e” with “c”, which makes it visually similar as well. This is a

case of typosquatting that confuses consumers.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not licensed by the Complainant to use its trademark nor is it affiliated with the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Respondent must have had knowledge of the Complainant’s trademark as it is well known and fanciful.

A passive holding of a domain name does not prevent a finding of bad faith in certain circumstances and such circumstances are met in this case. There can also be a threat of abusive use.

B. Respondent

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

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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.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable 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. The disputed domain name is simply a misspelling of the Complainant’s trademark.

Based on the available record, 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
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.

Based on the available record, 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.

In the present case, the Panel notes that the Respondent must have been aware of the Complainant’s

trademark as the disputed domain name was registered more than 15 years after the registration of the

Complainant’s trademark and the Complainant’s trademark is fanciful and has no dictionary meaning. Also,

typosquatting itself may be an indication of bad faith. The Respondent has replaced only one letter in order
to confuse Internet users and to benefit from typos.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this

proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness

or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide

any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or

use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0,

section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the

Complainant’s trademark, and the composition of the disputed domain name, and finds that in the

circumstances of this case the passive holding of the disputed domain name does not prevent a finding of

bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element 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 <sodcxo.com> be transferred to the Complainant.

/Nayiri Boghossian/

Nayiri Boghossian

Sole Panelist
Date: January 12, 2024