Sodexo v Privacy service provided by Withheld for Privacy ehf / Gba Bitico

WIPO Case No. D2022-0077

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Privacy service provided by Withheld for Privacy ehf / Gba Bitico

Case No. D2022-0077

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Gba Bitico, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sodexoeu.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 January 11, 2022. On January 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 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 the Complainant on January 13, 2022, 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 January 17, 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 the Respondent of the
Complaint, and the proceedings commenced on February 1, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 21, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 22, 2022.

The Center appointed Adam Samuel as the sole panelist in this matter on March 7, 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.

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4. Factual Background

The Complainant is a French company that specializes in food services and facilities management, principally in North America and Europe.

The Complainant owns a number of trademarks for the name SODEXO in a variety of countries including European Union trademark registration no. 006104657, registered on June 27, 2008, and International trademark registration no. 964615, registered on January 8, 2008. The Complainant owns a number of domain names including <sodexo.com> and <sodexo.fr>.

The disputed domain name was registered on December 1, 2021. The disputed domain name resolves to a website that is currently inaccessible. It previously resolved to a parking page which contained pay-per-click (“PPC”) links to the websites of a number of the Complainant’s competitors.

5. Parties’ Contentions
A. Complainant

The disputed domain name incorporates the Complainant’s SODEXO mark in its entirety with the addition of the element “eu” and the generic Top-Level Domain (“gTLD”) “.com”. The letters “eu” are understood as the geographical abbreviation of the European Union. This minor difference between the disputed domain name and the Complainant’s trademark does not distinguish the disputed domain name from that mark. The public will believe that the disputed domain name is linked to the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been commonly known as Sodexo or anything similar. The Respondent has no connection with the Complainant. The Complainant has not authorized or otherwise permitted the Respondent to register or use the disputed domain name.

The well-known character and reputation of the Complainant’s SODEXO mark means that the Respondent will probably have known of its existence when it registered the disputed domain name. SODEXO is a purely fanciful name and nobody could legitimately choose this word or any variation thereof unless seeking to create an association with the Complainant.

The Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the SODEXO mark, very likely for the purpose of creating confusion with the Complainant’s mark to divert or mislead third parties in order to make the Respondent an illegitimate profit. The Respondent has

subsequently used the disputed domain to attract Internet users and incite them to click on third party
commercial links by exploiting the confusion between the disputed domain name and the Complainant’s

trademark.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s distinctive trademark SODEXO, the acronym “eu”,
and the gTLD “.com”. The gTLD is irrelevant here as it is a standard registration requirement. See section
1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

Overview 3.0”).

Section 1.8 of the WIPO Overview 3.0 says:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical … or otherwise) would not prevent a finding of confusing similarity under the first element.”

Here, the added term is geographic.

For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Sodexo” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any legitimate purpose.

Based on the available record, where the Complainant has made out a preliminary prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

SODEXO is a made-up word with no ordinary meaning and is the name of a well-known company, headquartered in France, an European Union country.

When it registered the disputed domain name, the Respondent knew of the Complainant’s SODEXO trademark or at least the company name.

The Respondent appears to have registered the disputed domain name primarily to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

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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 <sodexoeu.com>, be transferred to the Complainant.

/Adam Samuel/
Adam Samuel
Sole Panelist
Date: March 11, 2022