Westmore · UDRP DecisionBenefitssodexo.com, Sodexovoya.com
The Panel found both disputed domain names confusingly similar to Sodexo's SODEXO trademark, found that the Respondent lacked rights or legitimate interests, and found bad-faith registration and use under paragraph 4(b)(iv) based on pay-per-click parking designed to capitalize on confusion with the well-known mark. The Panel ordered transfer of <benefitssodexo.com> and cancellation of <sodexovoya.com>, as requested by the Complainant.
The timeline behind benefitssodexo.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
How each disputed name was decided in this proceeding.
The decision illustrates that adding either a service-related term or a third-party trademark to a recognizable complainant mark will not necessarily prevent confusing similarity. It also shows how pay-per-click parking, lack of authorization or evidence of legitimate use, and inaccurate WhoIs information can combine to establish all three UDRP elements. Procedurally, the case is also notable because the Panel granted different remedies for two domains in the same proceeding.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sodexo v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2020-0310 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar The disputed domain names <benefitssodexo.com> and <sodexovoya.com> are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020. On February 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2020, 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 February 19, 2020. 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 25, 2020. 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, founded in 1966, is a leading provider of foodservices and facilities management, present in 72 countries. It is the owner, amongst others, of the international trademark registration No. 964615, filed on January 8, 2008, subsequently renewed in 2018, for the word & device mark SODEXO in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45 (Annex 6 to the Complaint). The disputed domain names <benefitssodexo.com> and <sodexovoya.com> were registered on November 22, 2019 and resolve to parked pages displaying pay-per-click advertisings. 5. Parties’ Contentions A. Complainant The Complainant asserts to employ 460,000 people, serving 100,000,000 customers in 72 countries, having had revenues of EUR 20.4 billion in 2018 and being listed as one of the “World’s most admired companies” by Fortune magazine. Having its SODEXO (previously SODEXHO) trademark achieved a well-known status, as recognized by several past UDRP panels, the Complainant further states that its trademark is largely used in connection with facility management services, benefits and rewards services as well as personal and home services. The first disputed domain name, <benefitssodexo.com> is, according to the Complainant, confusingly similar to the Complainant’s notorious trademark, creating a likelihood of confusion, given that its trademark’s distinctive element is reproduced in it with the addition of the generic term “benefits” which is insufficient to distinguish the disputed domain name from the Complainant’s trademark. The second disputed domain name <sodexovoya.com>, states the Complainant, is composed of the Complainant’s trademark SODEXO in association with the mark VOYA, which belongs to VOYA FINANCIAL and could be perceived by Internet users as a common project between these companies. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that: (a) the Respondent has no rights over SODEXO be it as a trademark, corporate name, trade name, domain name or any prior right in relation to the Complainant’s trademark rights over such expression; (b) the Respondent is not commonly known by the disputed domain names; (c) the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant to register or use the disputed domain names. As to the registration of the disputed domain names in bad faith the Complainant asserts that the Respondent knew of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering the well-known character of the Complainant and specially in view of the benefits and reward activities rendered by the Complainant and choice made by the Respondent in registering <benefitssodexo.com> and <sodexovoya.com>, which clearly seek to create an undue association with the Complainant and its benefits and rewards services. According to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the websites are associated, endorsed or recommended by the Complainant, which is not true and unduly earning profits from pay-per-click advertisements. The Complainant requests the transfer of the disputed domain name <benefitssodexo.com> and the cancellation of the disputed domain name <sodexovoya.com>. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer or cancelation of a disputed domain name: (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 has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred or cancelled, according to the Policy. A. Identical or Confusingly Similar The Complainant has established rights in the SODEXO trademark (Annex 6 to the Complaint). The addition of the term “benefits” does not prevent a finding of confusing similarity in the first disputed domain name and, as to the second disputed domain name, the addition to the Complainant’s well-known trademark of a third party trademark, given that the domain name “contains sufficiently recognizable aspects of the relevant mark” it does not avoid a finding of confusing similarity under the Policy, as recognized by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.12. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In the present case, the Respondent’s use of the disputed domain names in connection with pay-per-click links to third party websites that may compete with the Complainant’s products and services clearly cannot be considered a bona fide offering of goods or services. In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain names, or that it has acquired any registered trademarks or trade names corresponding to the disputed domain names, as well as the Complainant’s statement that the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant to register or use the disputed domain names corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain names. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain names, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the use of the disputed domain names in connection with parked websites that display links or pay-per-click advertisements characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s well-known trademark. Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus unfairly capitalizing on the SODEXO trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain names are either connected, endorsed or authorized by the Complainant. Another factor corroborates the finding of the Respondent’s bad faith conduct in this case: the use of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it. For the reasons above, the Panel finds that the Respondent’s conduct amounts to bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 <benefitssodexo.com> be transferred to the Complainant and that the disputed domain name <sodexovoya.com> be cancelled. Wilson Pinheiro Jabur Sole Panelist Date: April 8, 2020
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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