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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexho Alliance v. Stephane Pacaud

Case No. D2007-0910

 

1. The Parties

The Complainant is Sodexho Alliance of Montigny-Le Bretonneux, France, represented by Dejade & Biset, France.

The Respondent is Stephane Pacaud of Makati, the Philippines.

2. The Domain Name and Registrar

The disputed domain name <mysodexhoapps.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2007. On June 22, 2007, the Center transmitted by email to GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com a request for registrar verification in connection with the domain name at issue. On June 24, 2007, GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2007.

The Center appointed Teruo Doi as the sole panelist in this matter on August 20, 2007. 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.

Here, Japanese is the language of the governing registration agreement. However, considering the Complainant’s arguments and request that English be the language of the proceedings and taking into account that the Respondent’s default, the Panel determines that, according to the Rules, paragraph 11(a), the language of this administrative proceeding shall be English.

 

4. Factual Background

The facts stated in the Complaint are as follows:

(i) The Complainant is a French company established in 1966. (Schedule 3) The Complainant is the mother company of the Sodexho group of companies having 332,000 employees and operating in 80 countries.

The Sodexho group conducts business under the trade name and mark SODEXHO in the following fields (Schedule 4):

- Food and facilities management services (No. 1 worldwide for healthcare, seniors and education; No. 2 worldwide for business and industry and remote services);

- Issuing service vouchers and cards (No. 2 worldwide).

The Sodexho group’s worldwide activity geographically splits up as follows:

- 27% in continental Europe and among others France;

- 12 % in United Kingdom and Ireland;

- 37 % in North America;

- 12 % in Latin America;

- 12 % in Africa, Asia and Oceania.

(ii) The Complainant is the owner of the trademark SODEXHO, either the word alone or in combination with a star device, registered and used in more than 80 countries of the world. (Schedule 5) The mark SODEXHO is very distinctive and arbitrary and has a strong reputation and is widely known.

In Sodexho Alliance v. LaPorte Holdings, Inc., WIPO Case No. D2005-0287, it was held that “the trademark SODEXHO and SODEXHO PASS are well-known all over the world and Respondent obviously knew this famous trademark and Complainant’s business” (Administrative Panel Decision Para. 6.27).

The Complainant is the owner the following registered trademarks (Schedule 6):

- SODEXHO – French trademark registration No. 1 249 935, filed on November 4, 1983, renewed on July 10, 2006, designating goods and services in international classes 16 etc.;

- SODEXHO with star device – French trademark registration No. 96 654 774, filed on December 10, 1996, renewed on July 10, 2006, designating goods and services in international classes 16 etc.;

- SODEXHO with star device – French trademark registration No. 98 714 920, filed on January 27, 1996 designating magnetic cards and memory cards in international class 9;

- SODEXHO with star device – French trademark registration No. 00 3 027 800, filed on May 15, 2000, designating services in international classes 35, 38 and 40 and inter alia communications via the Internet, i.e., transmission of information via the Internet

- SODEXHO with star device – US trademark registration No. 2 318 133, filed on July 8, 1998, designating janitorial services; building maintenance; cleaning of buildings; disinfectant cleaning of health care facilities and nursing homes; laundry services for clothing and linen; construction and repair of buildings, etc. in international classes 37, 39, 41 and 42;

- SODEXHO with star device – US trademark registration No. 2 549 592, filed on June 29, 2000, designating conducting marketing studies; business management consultation; business management assistance, etc. in international classes 25, 38 and 40;

- SODEXHO with star device – US trademark registration No. 2937720, filed on July 18, 2003, designating retail services by direct solicitation by sales agents and telephone ordering services featuring medical equipment and consultation in the field of medical equipment purchase, etc. in international classes 35, 37, 41 and 44;

- SODEXHO with star device – International mark No. 689 106, filed on January 28, 1998, designating the general headings of the international classes 16, 36, 37, 39, 41 and 42;

- SODEXHO with star device – International mark No. 694 302, filed on January 28, 1998, designating magnetic cards and memory cards in international class 9; and

- SODEXHO with star device – International mark No. 746 997, filed on November 9, 2000, designating business organization and management consulting services; efficiency experts; research for business purposes, etc. in international classes 35, 38 and 40.

(iii) The Complainant has registered several hundred domain names consisting of the word “sodexho” and more than 60 domain names are active and connect to operating websites. The list of these active domain names is attached to the Complaint. (Schedule 7)

The Sodexho group promotes its activities under the following domain names:

- <sodexho.com> (the general website);

- <sodexho.fr>;

- <sodexdhousa.com>

The corresponding WHOIS are attached to the Complaint. (Schedule 8)

(iv) The domain name at issue <mysodexhoapps.com> was registered on December 12, 2001, by the company Sodexho Noram, being a U.S. subsidiary of the Complainant, and has been active between 2002 and 2006. An extract of the website Internet Archive is attached to the Complaint. (Schedule 9) The company Sodexho Noram inadvertently allowed this registration to expire in December 2006.

The Complainant discovered that:

- The disputed domain name <mysodexhoapps.com> was registered on December 12, 2006 by Respondent. A corresponding Whois dated January 2007 is attached to the Complaint. (Schedule 10)

- This disputed domain name points to a general page that features links to websites, some of them in connection with food management, restaurants and with financial field being then in direct competition with the products and services offered by the Sodexho group under the SODEXHO mark. This general page includes a search engine that can redirect the Internet user to competing websites to the Complainant’s website. Copies of the corresponding pages are attached to the Complaint. (Schedule 11)

The Complainant tried to settle the matter amicably and decided to send a cease and desist letter to the Respondent. The Complainant then discovered that the disputed domain name <mysodexhoapps.com> was transferred to a third party. The corresponding Whois dated April 2007 is attached to the Complaint. (Schedule 12)

A cease and desist letter was sent to the third party who informed the Complainant by phone that the disputed domain name <mysodexhoapps.com> should never have been registered in its name and was transferred back to the Respondent. The latest Whois shows that the disputed domain name <mysodexhoapps.com> is again registered in the name of the Respondent. An email was sent to the Respondent in last May but the Respondent did not reply. Copies of the cease and desist letters and the email sent to the Respondent are attached to the Complaint. (Schedule 13)

 

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the disputed domain name <mysodexhoapps.com> be transferred to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:

(i) The disputed domain name <mysodexhoapps.com> is identical or confusingly similar to the Complainant’s SODEXHO mark on which the Complainant has rights:

The disputed domain name <mysodexhoapps.com> strictly identically reproduces the trademark SODEXHO on which the Complainant has rights in numerous countries all around the world (and among others in France) with the only addition of the generic words “my” and “apps” the latter being a usual abbreviation of application.

Due to the identical reproduction of the SODEXHO mark, the public will of course believe that the disputed domain name <mysodexhoapps.com> comes from the Complainant or are linked to the Complainant’s website.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name <mysodexhoapps.com>:

The Respondent has no rights nor legitimate interests in the domain name <mysodexhoapps.com> as it has no rights on the word “sodexho” as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights.

The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXHO.

Moreover, 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 or by any subsidiary or affiliated company to register the disputed domain name and to use it.

The Respondent has no connection with the Complainant. The use of the domain name <mysodexhoapps.com> by the Respondent cannot be considered as a legitimate non commercial or fair use of the Complainant’s mark SODEXHO.

(iii) The disputed domain name <mysodexhoapps.com> has been registered and is being used in bad faith:

Due to the well-known character of the SODEXHO mark, it is unlikely that the Respondent registered the disputed domain name <mysodexhoapps.com> without knowing the existence of the SODEXHO mark or that he may have legitimately think to be able to lawfully use the disputed domain name when registering it and that the choice of the domain name results from a mere coincidence considering the very distinctive and arbitrary character of the coined name “sodexho”.

The Complainant therefore strongly assumes that the Respondent obviously knew about the Complainant’s rights in the SODEXHO mark, worldwide, and among others in France, and was of bad faith when registering this domain name. The lack of response from the Respondent further to the cease and desist letters and emails sent by the Complainant corroborates his bad faith, especially, the retrocession of the disputed domain name <mysodexhoapps.com> to the Respondent after the third party received the cease and desist letter proves that the Respondent was aware of the Complainant’s claims and that the Respondent knowingly pursues using the disputed domain name for diverting Internet users.

The Respondent is indeed using the disputed domain name to divert Internet traffic to unrelated websites offering competitive or at least similar goods and services to Sodexho’s ones by exploiting the confusion with the well-known mark SODEXHO.

This is then an attempt to attract, for commercial gain, Internet users to the Complainant’s competing websites and to other different websites.

Such a use creates a likelihood of confusion with the Complainant’s mark SODEXHO, as to the source, sponsorship, affiliation or endorsement of the sites to which the domain names redirect Internet users. Numerous precedents in UDRP decisions support this conclusion.

The registration and use of the disputed domain name also tarnish and dilute the SODEXHO mark by confusing consumers as well as potential consumers and interfere with the Complainant’s business by frustrating attempts by Internet users to reach Sodexho’s official websites.

The unauthorized use and registration of the disputed domain name by the Respondent to redirect consumers to the Complainant’s competing products and services are solely for the purpose of achieving commercial gain and then constitute bad faith registration and use.

The Respondent’s bad faith is corroborated by his very recent and aggressive reaction: as prescribed by the Supplemental Rules, a copy of this complaint was sent to him on June 19, 2007. He immediately replied the following message in French: “[t]out зa pour un nom minable et sans aucune valeur? Vous кtes pathкtique. D’ailleurs ce nom et tellement pourri que je ne sais mкme pas a quoi ou a quelle soi-disant marque vous faites reference” which can be translated in English as follows: “[a]ll that for a miserable and valueless name. You are pathetic. Anyway this name is so rotten that I do not even know to what or which supposed mark you refer to”. A copy of his email of June 19, 2007 is attached. (Schedule 14)

B. Respondent

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

 

6. Discussion and Findings

Paragraph (4) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) The domain name registered by the respondent 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 domain name; and

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

The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint.

A. Identical or Confusingly Similar

Although the disputed domain name is not identical to the SODEXHO mark, it does entirely incorporate the SODEXHO mark, adding the prefix “my” and the suffix “apps”. The mark SODEXHO is an arbitrary combination of seven letters of alphabet and inherently distinctive. The Complainant’s registered trademarks consisting of the mark SODEXHO, the word alone or in combination with a star device, have been extensively used by member companies of the Complainant in conducting their businesses throughout the world. Thus, the mark SODEXHO has become well-known and famous.

The disputed domain name <mysodexhoapps.com> consists of the word “sodexho” preceded by a commonly used descriptive word “my” and followed by an equally descriptive word “apps” being a commonly used abbreviation of “applications”. These additional words do not affect the finding of confusing similarity of the disputed domain name with the Complainant’s SODEXHO mark. The practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous UDRP decisions. See for example, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946). In the present case, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

As well established by previous UDRP Panels, once a complainant makes a prima facie case that a respondent lacks rights or legitimate interest to a domain name at issue, the respondent carries the burden of proof demonstrating rights or legitimate interests in the domain name to rebut the complainant’s contentions. The Panel notes that the defaulting Respondent has not provided any evidence of the Respondent’s rights or legitimate interests in the disputed domain name. In the circumstances, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no evidence to show that the Respondent has been or is commonly known by the disputed domain name, and the Complainant has never authorized or permitted the Respondent to use the Complainant’s mark SODEXHO as a part of the disputed domain name.

As appropriately asserted by the Complainant, 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 or by any subsidiary or affiliated company to register the disputed domain name and to use it.

C. Registered and Used in Bad Faith

The disputed domain name has been registered and is being used in bad faith by the Respondent on the following grounds:

In view of the distinctive quality of the SODEXHO mark and its worldwide recognition as a trade symbol of the Claimant’s business activities, the Panel finds that the Respondent’s bad faith is undeniable in securing registration of the disputed domain name <mysodexhoapps.com> that creates a likelihood of confusion among Internet users from which profit is presumably derived and dilutes the distinctive power of the Complainant’s mark SODEXHO.

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the domain name <mysodexhoapps.com> be transferred to the Complainant.

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Teruo Doi
Sole Panelist

Dated: September 3, 2007