SODEXO v. Eric Loeb
Claim Number: FA2002001882676
Complainant is SODEXO (“Complainant”), represented by Timothy H. Hiebert, Massachusetts, USA. Respondent is Eric Loeb (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sodaxo.us>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2020; the Forum received payment on February 10, 2020.
On February 12, 2020, Google LLC confirmed by e-mail to the Forum that the <sodaxo.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sodaxo.us. Also on February 12, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, SODEXO, is one of the world's largest multinational corporations, providing restaurant and catering, facilities management, and other workplace service. Complainant has rights in the trademark SODEXO based upon its use in commerce and its registration with the European Union Intellectual Property Office (“EUIPO”) dating back to 2008 (prior to this, and since 1966, Complainant used the mark SODEXHO). Respondent’s <sodaxo.us> domain name, registered on October 29, 2019, is confusingly similar to Complainant’s mark as Respondent incorporates the SODEXO mark, merely replaces the letter “e” with the letter “a”, and appends the “.us” country-code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <sodaxo.us> domain name. Respondent is not licensed or authorized to use Complainant’s SODEXO mark and is not commonly known by the disputed domain name. Respondent has no rights in a mark that is identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Additionally, Respondent is not using the <sodaxo.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make any use of the disputed domain name in connection with a website. However, Respondent does use the disputed domain name to impersonate Complainant in furtherance of a fraudulent, email phishing scheme.
Respondent registered or uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of an email phishing scheme. Additionally, Respondent fails to make an active use of the disputed domain name for a website. Moreover, Respondent engages in typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the SODEXO mark prior to the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the SODEXO mark based upon its registration with the EUIPO. Registration of a mark with a national government trademark office is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Complainant provides printouts from the EUIPO database to evidence its registrations for the SODEXO mark. Therefore, the Panel finds that Complainant has rights in the SODEXO mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <sodaxo.us> domain name is confusingly similar to the SODEXO mark as it copies the mark, merely replacing the letter “e” with the letter “a” and adding the “.us” ccTLD. Misspelling of a complainant’s mark, either by adding or replacing letters, and adding a ccTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel agrees with Complainant and finds that the <sodaxo.us> domain name is confusingly similar to Complainant’s SODEXO mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
With respect to Policy ¶ 4(c)(i), the Panel finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Complainant next argues that Respondent is not licensed or authorized to use the SODEXO mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Eric Loeb,” and there is no other evidence to suggest that Respondent is known otherwise or was authorized to use the SODEXO mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Moreover, Complainant argues that Respondent is not using the <sodaxo.us> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active website use of the disputed domain name. Failure to make an active website use of a confusingly similar domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) or (iv). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant has provided a screenshot of a “could not be found” message resulting from an attempt to reach a website through the disputed domain name. The Panel agrees with Complainant that this does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
In addition, Complainant claims that Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of an email address associated with a disputed domain name to pass oneself off as a complainant in furtherance of phishing activity is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant asserts that Respondent uses an email address associated with the disputed domain name to impersonate one of Complainant’s employees and to send phishing e-mails to Complainant’s customers that are designed to solicit payments of invoices to a different bank account than that used by Complainant. Complainant provides copies of emails and payment instructions sent to Complainant’s customers by Respondent, attempting to pass off Respondent as one of Complainant’s employees. Thus, the Panel finds that Respondent’s use of the disputed domain name indicates that it lacks rights and legitimate interests per Policy ¶¶ 4(c)(ii) and (iv).
Complainant argues that Respondent must have had actual knowledge of Complainant’s SODEXO mark. Actual knowledge is sufficient and may be proven through a range of circumstances including the use of a disputed domain name for nefarious activities. See Spectrum Brands, Inc. v. Guo Li Bo, FA1711001760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant submits evidence of the reputation of its SODEXO mark including its long history, geographic scope, awards won, and website analytics. It further claims that since Respondent uses the correctly spelled SODEXO mark in its phishing emails and was posing as one of Complainant’s employees while targeting Complainant’s customers, Respondent must have had actual knowledge of the SODEXO mark. By a preponderance of the evidence presented, the Panel finds that Respondent had actual knowledge of Complainant’s mark.
Complainant next argues that Respondent has registered or uses the <sodaxo.us> domain name in bad faith. Complainant alleges that Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues that Respondent is attempting to impersonate Complainant as part of an email phishing scheme in search of commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme constitutes bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Complainant claims that Respondent uses an email address associated with the disputed domain name to impersonate one of Complainant’s employees and to send phishing e-mails to Complainant’s customers designed to solicit payments under false pretenses. Complainant provides emails sent by Respondent regarding this fraudulent scheme. In one of these emails, Respondent states that “[w]e are undergoing a system change with our accounting” and goes on to “request you update your records with our subsidiary account in the US for all payments due to Sodexo going forward…” An attachment to this message provides payment information to a bank account that is not associated with Complainant. In light of this evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also asserts that Respondent fails to make an active website use of, and is passively holding the domain name. Failure to make an active website use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the disputed domain name which resolves to an inactive website featuring the message “could not be reached”. With no explanation from Respondent in this case, the Panel finds that Respondent’s inactive website use of the disputed domain name further indicates bad faith registration or use per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”) As noted earlier, Respondent merely replaces the letter “e” with an “a” in the SODEXO mark. Thus, the Panel finds that Respondent’s <sodaxo.us> domain name constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sodaxo.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 9, 2020
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