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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sodexho Alliance v. LaPorte Holdings,Inc

Case No. D2005-0287

 

1. The Parties

The Complainant is Sodexho Alliance, France, represented by Isabelle Poujade-Auriol, Santarelli, France.

The Respondent is La Porte Holdings, Inc., Los Angeles, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names;

<sedexhopass.com>

<sodehopass.com>

<sodehxo.com>

<sodexhoawards.com>

<sodexhobenifits.com>

<sodexhoinfonet.com>

<sodexhoopass.com>

<sodexhopasss.com>

<sodexohopass.com>

<sodexopas.com>

<sodexopass.com>

<sodexsopass.com>

are registered with Nameking Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2005.

On March 22, 2005, the Center transmitted, by email, to Nameking Inc. a request for registrar verification in connection with the domain names at issue. On April 7, 2005, Nameking Inc. transmitted by email to the Center its verification response informing that the Respondent La Porte Holdings, Inc., of Los Angeles USA. is listed as the registrant and contact details for the administrative, billing, and technical contact were provided.

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”).

The Panel independently determined and agreed with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, Rules and 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 April 8, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2005.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means to achieve actual service of notice of the complaint to the Respondent. In the light of the information available to it. The Panel accepts that the Center has fulfilled this obligation.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2005.

The Center appointed the sole panelist in this matter on June 23, 2005. 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.

The Panel considers that according to paragraph. 11 of the Rules, the language of the proceedings be English.

 

4. Factual background

4.1 The Complainant in this administrative proceedings SODEXHO ALLIANCE, is a corporation having its principle place of business in France. The Complainant is the mother company of the SODEXHO group. The SODEXHO group has business activities on a worldwide scale in the field of (a) food and management services (b) issuing of service vouchers and card and (c) river and harbor cruise.

4.2 The Complainant is the owner of trademark SODEXHO and SODEXHOPASS and hold registration thereof in different countries in the world including United States of America, France, Germany, Japan, China and Brazil for numerous products and services in International Class 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41 & 42.

4.3 The Complainant is the registrant of several domain names containing the trademark SODEXHO including “www.sodexho.com”, “www.sodexhopass.com”, “www.sodexhousa.com” and “www.sodexhobenefits.com”.

4.4 The complainant operates its principle website “www.sodexhobenefits.com” for US privileged clients. The complainant also operates websites “www.sodexho.com”, “www.sodexhopass.com”, “www.sodexhousa.com” and “www.sodexhobenefits.com”. The said websites contain information on the business activities of SODEXHO ALLIANCE.

4.5 The Respondent is the registrant of the domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com>, <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com>, <sedexhopass.com> and that these domain names point to a general page that features links to websites, some of them in connection with food industry, hotels and with financial field being in direct competition with the products and services offered by the SODEXHO group under the “SODEXHO” and “SODEXHO PASS” marks; that this general page includes a search engine that can redirect the Internet user to competing websites to Sodexho’s ones.

4.6 The Complainant has requested that the contested domain names be transferred from the Respondent, in accordance with paragraph 4(b)(i) of the Policy, to the complainant.

 

5. Parties’ Contentions

5.1 The complainant SODEXHO ALLIANCE, which was created in 1966 is the mother company of the SODEXHO Group employing 313000 people and operating in 76 countries. The SODEXHO Group has business activities on a worldwide scale that it renders under the business name and mark “SODEXHO” in the three following fields:

- Food and management services (n° 1 worldwide);

- Issuing of service vouchers and cards (n° 2 worldwide);

- River and harbor cruises (n° 1 worldwide).

5.2 The services relating to issuing of vouchers are rendered under the business name and mark “SODEXHO PASS”.

5.3 The SODEXHO group has, among others, an important activity in the United States. One of the American subsidiaries of SODEXHO ALLIANCE is SODEXHO MARRIOTT SERVICES which results from the merger of the North American operations of Sodexho Alliance and Marriott Management Services. This company is listed on the New York Stock Exchange. In North America, the SODEXHO group employs more than 110000 people, and operates more than 10000 sites. An operating website for US privileged clients is available through the domain “www.sodexhobenefits.com”.

Some of the other operating websites of Complainant are “www.sodexho.com”, “www.sodexhopass.com”, “www.sodexhousa.com” and “www.sodexhobenefits.com”.

5.4 The company SODEXHO ALLIANCE is the owner of marks “SODEXHO” and “SODEXHO PASS” which are continuously and extensively used in more than 80 countries, the mark “SODEXHO”, which is very distinctive and arbitrary, has a strong reputation for food and management services and is widely known, in particular in the United States.

5.5 The company SODEXHO ALLIANCE is among others the owner of the following registered marks.

- “SODEXHO”, French trademark registration n° 1 249 935 filed on November 4, 1983, in renewal of the mark n° 883 256 of November 6, 1973, renewed on June 1st, 1993 and lastly renewed on October 7, 2003, designating numerous products and services in international classes 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41 and 42.

- “SODEXHO” with star device, French trademark registration n° 96 654 774 filed on December 10, 1996 designating goods and services in international classes 16, 29, 30, 31, 32, 33, 36, 37, 39, 41 and 42.

- “SODEXHO” with star device, French trademark registration n° 98 714 920 filed on January 27, 1998 designating magnetic cards and memory cards in international class 9.

- “SODEXHO” with star device, French trademark registration n° 00 3 027 800 filed on May 15, 2000, designating services in international classes 35, 38 and 40 and among others communications via the Internet, namely transmission of information via the Internet.

- “SODEXHO” with star device, US trademark registration n° 2 318 133 filed on July 8, 1998 and 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; ground transportation of patients for health care facilities and nursing homes; warehousing; training in the field of customer service; catering; restaurants; cafeterias; canteen services; vending machine services; design for others of food service facilities; engineering; sanitation consultation and engineering; nutrition counseling; child care; consultation in the fields of food service, space design, facilities management and energy conservation; security guard services; lawn care and grounds keeping services in international classes 37, 39, 41 and 42.

- “SODEXHO” with star device, US trademark registration n° 2 549 592 filed on June 29, 2000, designating conducting marketing studies; business management consultation; business management assistance; business organization consultation; outdoor advertising; shop window dressing and display arrangement services, and business management of hotels; personnel recruitment and public relations, communications by computer terminals; communications via the Internet, namely transmission of information via the Internet, waste treatment, water treatment, production of energy, material treatment information, destruction of waste and trash, incineration of waste and trash, and recycling of waste and trash in international classes 35, 38 and 40.

- “SODEXHO” with star device, US trademark application n° 78/276 324 filed on July 18, 2003, to designate retail services by direct solicitation by sales agents and telephone ordering services featuring medical equipment and consultation in the field of medical equipment purchase; installation, maintenance and repair services of medical equipment; training of medical equipment users; rental of medical equipment and consultation relating to medical equipment refurbishment or upgrades in international classes 35, 37, 41 and 44.

- “SODEXHO” with star device, international mark n° 689 106 filed on January 28, 1998 designating the general headings of the international classes 16, 36, 37, 39, 41 and 42.

This international mark is protected in the following countries: ALGERIA, AUSTRIA, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, SLOVAK REPUBLIC, RUSSIAN FEDERATION, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, UKRAINE, UNITED KINGDOM, VIETNAM.

- “SODEXHO” with star device, international mark n° 694 302 filed on January 28, 1998 designating magnetic cards and memory cards in international class 9.

This international mark is protected in the following countries: ALGERIA, ARMENIA, AUSTRIA, AZERBAIJAN, BELARUS, BENELUX, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, RUSSIAN FEDERATION, SLOVAK REPUBLIC, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, UKRAINE, UNITED KINGDOM, VIETNAM.

- “SODEXHO” with star device, international mark n° 746 997 filed on November 9, 2000, designating business organization and management consulting services; efficiency experts; research for business purposes; evaluations relating to commercial matters; bill-posting; rental of office machines and apparatus; rental of photocopying machines; accounting; consultancy pertaining to personnel issues; typing services; tax declaration preparation; shop window dressing; demonstration of goods; document reproduction; market studies; organization of exhibitions for commercial or advertising purposes; computer file management; administrative management of hotels; personnel recruitment; payroll preparation; economic forecasting; public relations; secretarial services ; telecommunications; press and information agencies; communication via computer terminals; communication via the Internet, namely data transmission via the internet; telephone services; telephone calls; rental of telecommunication apparatus; rental of modems; rental of facsimile apparatus; rental of telephones; rental of apparatus for sending messages; electronic mail services; computer-aided transmission of messages and images; information on telecommunications; facsimile transmission; transmission of messages ; air deodorising; air purification; air freshening; food and drink preservation; treatment of waste (processing); treatment of water; production of energy; information about treatment of materials; rental of generators; destruction of waste; incineration of waste; recycling of waste in international classes 35, 38 and 40.

This international mark is protected in the following countries: ALGERIA, AUSTRIA, AZERBAIJAN, BELARUS, BENELUX, CHINA, CZECH REPUBLIC, DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA, DENMARK, EGYPT, FINLAND, GERMANY, HUNGARY, ITALY, JAPAN, KAZAKHSTAN, LATVIA, MOROCCO, MONACO, NORWAY, POLAND, PORTUGAL, ROMANIA, RUSSIAN FEDERATION, SINGAPORE, SLOVAK REPUBLIC, SLOVENIA, SPAIN, SWEDEN, SWITZERLAND, TURKEY, UNITED KINGDOM, VIETNAM, UKRAINE.

- “SODEXHO PASS” with star device, Chinese trademark registrations n° 1358775, n° 1320462 and n° 1354909 filed on July 14, 1998 designating respectively magnetic cards, memory cards in international class 9, printed matter, vouchers in international class 16 and issuing of vouchers in international class 36.

- “SODEXHO PASS” with star device, German trademark registration n° 39828773 filed on May 22, 1998 designating magnetic cards, memory cards, printed matter, vouchers and issuing of vouchers in international classes 9, 16 and 36.

- “SODEXHO PASS” with star device, Brazilian trademark application n° 820688975 and trademark registrations n° 820688967 and n° 820688959 filed on April 22, 1998 designating respectively issuing of vouchers in international class 36, memory cards in international class 9 and printed matter, vouchers in international class 16.

- “SODEXHO PASS” with star device, Japanese trademark registration n° 4601543 filed on March 1, 2001, designating magnetic cards, memory cards, printed matter, vouchers and issuing of vouchers in international classes 9, 16 and 36.

- “SODEXHO PASS” with star device, Mexican trademark registration n° 596829, n° 681374 and n° 681373 filed on July 30, 1998 designating respectively magnetic cards, memory cards in international classes 9, printed matter, vouchers in international class 16 and issuing of vouchers in international class 36.

- The American subsidiary of SODEXHO ALLIANCE, the company SODEXHO PASS USA, is also the owner of the US trademark registration “SODEXHO PASS” n° 2639757 filed on October 15, 2001, to designate administration of employee benefit plans for others, namely of plans for defraying costs associated with transportation and parking in international class 36.

5.6 The company SODEXHO ALLIANCE has registered several domain names including “SODEXHO” and the group promotes its activities under several operating domain names, and among others:

“www.sodexho.com”

“www.sodexhopass.com”

“www.sodexhousa.com”

“www.sodexhobenefits.com”

5.7 There are more than 50 domain names including “SODEXHO” or “SODEXHO PASS” that are operated by the SODEXHO Group.

5.8 The domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com> strictly identically reproduce “SODEXHO” / “SODEXHO PASS” on which the company SODEXHO ALLIANCE has rights as business name and mark in numerous countries all around the world and among others in the United States where the company LaPorte Holdings, Inc. is located.

5.9 The domain names <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com> and <sedexhopass.com> present very minor differences compared to the “SODEXHO” and “SODEXHO PASS” marks:

5.10 The disputed domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com>, <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com> and <sedexhopass.com> are identical or confusingly similar to the “SODEXHO” and “SODEXHO PASS” marks.

5.11 The Respondent has no rights nor legitimate interests in the domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com>, <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com> and <sedexhopass.com> as it has no rights on SODEXHO or SODEXHO PASS as corporate name, trade name, mark or domain name that would be prior to the Complainant’s rights.

5.12 The Respondent was not commonly known by the concerned domain names prior to the adoption and use by the Complainant of the corporate name, business name and marks “SODEXHO” and “SODEXHO PASS”.

5.13 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 concerned domain names and to use them.

5.14 The Respondent having no connection with the Complainant, the use of these domain names by the company LaPorte Holdings, Inc. cannot be also considered as a legitimate non commercial or fair use of the Complainant’s marks SODEXHO and SODEXHO PASS.

5.15 The Complainant therefore strongly claims that the company LaPorte Holdings, Inc. perfectly knew the rights it owns on the names “SODEXHO” and “SODEXHO PASS” worldwide and among others in the United States and was of bad faith when registering these domain names.

5.16 The Respondent did not reply to the Complainant’s contentions. The claims made by the Complainant, therefore, remain un-rebutted and un-challenged.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted. It is therefore appropriate, to note that merely because Respondent has not made a response to the Complaint does not avoid the necessity of examining the issues in the light of the evidence.

Paragraph 4 of the policy provides that the onus of proof is on the Complainant. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant or cancelled:

1. The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

2. the Respondent has no rights or legitimate interests in respect of the domain names; and

3. the domain names have been registered and are being used in bad faith.

That being so, the panel will now proceed to enquire if the complaint has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the policy.

A. Identical or Confusingly Similar

6.1 The complainant is the owner of marks SODEXHO and SODEXHO PASS which are continuously and extensively used in more than 80 countries. The trademarks SODEXHO and SODEXHO PASS are registered in the name of the complainant in different countries in the world for the goods and services in International classes 5, 9, 16, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42 and 44. The trademark portfolio of the complainant is annexed to the complaint containing the details of hundred of registrations of trademarks SODEXHO.

6.2 The American subsidiary of SODEXHO ALLIANCE, the company SODEXHO PASS USA, is also the owner of the US trademark registration SODEXHO PASS n° 2639757 filed on October 15, 2001, to designate administration of employee benefit plans for others, namely of plans for defraying costs associated with transportation and parking in international class 36.

6.3 The complainant has also registered several domain names including SODEXHO. The complainant operates its principle website “www.sodexhobenefits.com” for US privileged clients. The complainant also operates websites “www.sodexho.com”, “www.sodexhopass.com”, “www.sodexhousa.com” and “www.sodexhobenefits.com”. The said websites contain information on the business activities of SODEXHO ALLIANCE. The details of the domain names registered by the complainant is contained in the schedule attached to the complaint.

6.4 The evidence produced on record by the Complainant sufficiently establish the prior adoption/use of the trademarks and domain names, as aforesaid, by the Complainant.

6.5 The Complainant has thus discharged its onus in establishing its proprietary rights in the trademarks SODEXHO and SODEXHO PASS on account of priority in adoption, use and registrations. The complainant has also succeeded in establishing his right to the domain names consisting of the mark SODEXHO on account of their prior use and registrations.

6.6 The domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com> strictly identically reproduce “SODEXHO” / “SODEXHO PASS” on which the company SODEXHO ALLIANCE has rights as business name and mark in numerous countries all around the world and among others in the United States where the company LaPorte Holdings, Inc. is located.

6.7 Due to the identical reproduction of the “SODEXHO” and “SODEXHO PASS” marks, the public will of course believe that these domain names come from the SODEXHO group or are linked to SODEXHO.

6.8 The domain names <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com>, <sedexhopass.com> and sodexhobenifits that only present some very slight variations compared to the marks SODEXHO and SODEXHO PASS.

6.9 In the domain names <sodexopas.com>, <sodexopass.com>, <sodehopass.com>, only one letter (H or X) has been deleted.

- In the domain name <sodehxo.com>, the letters H and X are reversed.

- In the domain name <sodexohopass.com>, the letter H has been deleted whereas the letters HO have been added.

- In the domain names <sodexsopass.com>, and <sedexhopass.com>, one letter is replaced with another (S replacing with H in the one case, E replacing with O in the other case).

6.10 This is a typical case of typo-squatting that has been already disapproved by several WIPO decisions (Telstra Corporation Ltd. v Warren Bolton Consulting Pty. Ltd. WIPO Case D2000-1293Playboy Enterprises International Inc. v. SAND WebNames - For Sale WIPO Case No. D2001-0094 - Red Bull GmbH. v. Grey Design WIPO Case No. D2001-1035).

6.11 The overall impression between these signs and the marks “SODEXHO” and “SODEXHO PASS” is so close that the consumers will be confused.

6.12 Moreover, it cannot be also excluded that Internet users may mistype SODEXHO official website addresses (such as “www.sodexho.com”, “www.sodexhopass.com” and “www.sodexhobenefits.com”) and type by error the domain names <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com>, <sedexhopass.com> and <sodexhobenifits>. In such a case, the consumers may obviously think that these domain names are connected with the SODEXHO group.

6.13 In the Toronto Dominion Bank v. Boris Karpachev, WIPO Case No.D2000-1571, a panel had no difficulty in deciding that the domain names <tdwatergouse.com> and <dwaterhouse.com> were essentially identical and confusingly similar to the trademark TD WATERHOUSE, for the former had one letter changed and the latter had one letter omitted. There are many similar cases, of which at least one is particularly illustrative, namely Yahoo! Inc. v. Eitan Zviely et al, WIPO Case No.D2000-0273. In that case, a series of domain names was held to be confusingly similar to the Yahoo! trademark, the similarity and confusion arising from variations that had been made to the spelling of the name, such as Jahu, Jaghoo and Yahjoo. The variation to the spelling of the trademark that has occurred in the present case has resulted in the same confusing similarity.

6.14 For the above reasons, the Panel comes to the conclusion that the first element under the policy, that the domain names registered by the Respondent are identical or confusingly similar to the trademarks/service marks/domain names in which the Complainant has a right.

B. Rights or Legitimate Interests

6.15 Paragraph 4(c) of the Policy lists the following three non-exclusive methods for determining whether Respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

6.16 As to the circumstances under paragraph 4(c)(i) of the Policy, Complainant has not consented to the Respondent’s use of the domain names, which incorporates the Complainant’s trademark SODEXHO or the marks as are deceptively similar thereto.

6.17 Respondent is using the domain names by providing links from its website to multiple other websites concerning competitive busiess, which fact in the Panel’s view, shows that Respondent is well aware of Complainant as well as of its products and services, and, instead of making a bona fide use of the domain names, rather intends to have a free ride on the fame and good will of Complainant and its trademarks.

6.18 Furthermore, none of the other circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are present. The sole purpose of registering the domain names at issue by the Respondent was to cause confusion and divert the legitimate business of Complainant to itself or to the products produced by Complainant’s competitors.

6.19 Moreover, the Respondent is using the above domain names 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 marks SODEXHO and SODEXHO PASS.

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

6.21 Such a use creates a likelihood of confusion with the Complainant’s marks SODEXHO and SODEXHO PASS, as to the source, sponsorship, affiliation or endorsement of the sites to which the domain names redirect Internet users. Typosquatting constitutes registration and use in bad faith (General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher WIPO Case n° D2000-0377).

6.22 The registration and use of the concerned domain names also tarnish and dilute the SODEXHO and SODEXHO PASS marks by confusing consumers as well as potential consumers and interferes with Sodexho’s business by frustrating attempts by Internet users to reach Sodexho’s official websites.

6.23 As LaPorte Holdings, Inc. has already engaged in abusive registrations of domain names, it is hardly likely that the company LaPorte Holdings, Inc. registered the above domain names without knowing the existence of the mark “SODEXHO” and “SODEXHO PASS”, that it may have legitimately think to be able to lawfully use the domain names at issue when registering them and that the choice of these domain names results from a mere coincidence due to very distinctive and arbitrary character of the coined names “SODEXHO” and “SODEXHO PASS”.

6.24 The Respondent was given notice that it had time until April 28, 2005, to send response to the Complainant and to the center, that it would be in default if it did not do so and that, by virtue of paragraphs 14 of the Rules, the Panel might draw such inferences from its default as it considered appropriate. As the Respondent is in default, the Panel, after considering all of the evidence and drawing all reasonable inferences both from the evidence and from the default, concludes that Respondent has no right or legitimate interest in the disputed domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com>, <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com> and <sedexhopass.com>

C. Registered and Used in Bad Faith

6.25 For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.

6.26 Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of our documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

6.27 The trademark SODEXHO & SODEXHO PASS are well-known all over the world and Respondent obviously knew this famous trademark and Complainant’s business. Therefore it is inconceivable that Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain names.

6.28 When accessing the website under the disputed domain names an unsolicited pop-up advertisement appears and it can be assumed that the Respondent benefits financially from such advertisements. In this sense, even if the user who access at Respondent’s website may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the [trade and] service mark to attract the user with a view to commercial gain (Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, citing in turn National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No.D2000-0118). This represents evidence of bad faith in the sense of para 4(b)(iv) of the Policy.

6.29 Furthermore, Respondent displays information about Complainant’s competitors by the numerous links placed on the website under the disputed domain names. Through this use Respondent’s intention is also to disrupt Complainant’s business. This constitutes another element of bad faith in the sense of para 4(b)(iii) of the Policy.

6.30 The unauthorized use and registration of the domain names at issue by the Respondent to redirect consumers to Complainant’s competing products and services is solely for the purpose of achieving commercial gain and then constitute bad faith registration and use.

6.31 The Respondent is used to register domain names composed of famous marks or of slight variations to divert Internet users to competing websites as it was already involved in the following WIPO decisions:

- Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc. WIPO Case D2004-0849

- HBH, L.P. v. LaPorte Holdings, Inc. WIPO Case D2004-0864

- Knight Transportation Inc. v. LaPorte Holdings, Inc. WIPO Case D2004-1022

- Robert H. Ham Associates, Limited v. LaPorte Holdings, Inc. WIPO Case D2004-1051

- CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc. WIPO Case D2004-1072

- AT&T Corp. v. LaPorte Holdings, Inc. WIPO Case D2004-1088.

The above WIPO decisions show that all the concerned domain names registered by LaPorte Holdings, Inc. were transferred to the Complainants.

6.32 Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No.D2000-1397: and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No.D2002-0806) and under the Policy (see paragraph 2 of the policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is well known worldwide, it is unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

6.33 Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States, or of many other countries would have made Complainant’s registrations known to the Respondent.

6.34 Furthermore, the mere fact that the disputed domain name is a typo-squatting case (i.e. Respondent makes slight changes to the Complainant’s mark, in the apparent hope that those who seek to visit the website of the mark holder, the Complainant, might inadvertently make a typographical error and potentially could be taken to a website constructed by the Respondent to profit from the confusion) constitutes in itself bad faith registration and use, for example in General Electric Company v. Fischer Zvieli a/k/a Zvieli Fischerthat WIPO Case No.D2000-0377.

6.35 The Panel therefore concludes on the basis of evidence on record and that the allegation of the Complainant remain unrebutted, that the Respondent has registered and is using the domain names in bad faith.

 

7. Decision

The Panel finds that the Complainant has proved each of the three elements of paragraph 4 (a) of the Policy. The Administrative Panel, therefore orders that the disputed domain names <sodexhobenifits.com>, <sodexhoinfonet.com>, <sodexhopasss.com>, <sodexhoopass.com>, <sodexhoawards.com>, <sodexopas.com>, <sodexohopass.com>, <sodexopass.com>, <sodehxo.com>, <sodexsopass.com>, <sodehopass.com> and <sedexhopass.com> be transferred to the Complainant.


Amarjit Singh
Sole Panelist

Date: July 2, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0287.html

 

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