ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Name Redacted Case No. D2022-2349 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Name Redacted1. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger, UAB (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2022. On June 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 1, 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 July 6, 2022. 1 The Respondent appears to have used the name of a third party when registering the disputed domain name, as the name disclosed by the Registrar seems to be the name of one of the Complainant's employee. In light of the potential identity theft, the Panel has redacted the Respondent's name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. page 2 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 July 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 4, 2022. The Center appointed Christophe Caron as the sole panelist in this matter on August 16, 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. 4. Factual Background The Complainant is Sodexo, a French limited company specialized in foodservices and facilities management. The Complainant owns several trademarks composed of the term SODEXO, including: - the French semi-figurative trademark Registration No. 3513766, filed and registered on July 16, 2007 and renewed in 2017, reproduced below: - the European Union word trademark Registration No. 008346462 SODEXO, registered on February 1, 2010 and duly renewed in 2019; - the International word trademark 008346462 No. 1240316 SODEXO, registered on October 23, 2014. The Complainant also owns domain names incorporating its trademark SODEXO, including . The disputed domain name was registered on June 23, 2022. The disputed domain name currently does not resolve to an active website, and previously resolved to a parking page provided by the Registrar. 5. Parties' Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar First, the Complainant states that the disputed domain name should be considered as confusingly similar to its prior rights since the disputed domain name wholly reproduces its SODEXO marks and is followed by (i) the word "pass" which it massively uses to identify its vouchers and (ii) the country name "belgium" where it is among others located. page 3 The Complainant asserts that the additions of the terms "pass" and "belgium" are inoperative to distinguish its marks since it is widely admitted that the addition of a generic or descriptive term to a mark do not alter the fact that the disputed domain name is confusingly similar to the Complainant's trademarks. Thus, the Complainant contends that the public will undoubtfully believe that the disputed domain name comes from SODEXO group or is linked to SODEXO. Rights or Legitimate Interests The Complainant states that it appears to be a case of identity theft in an attempt to make believe that the disputed domain name has been legitimately registered. The Complainant contends that it does not have any affiliation, association, sponsorship or connection with the Respondent and that he 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. In addition, the Complainant asserts that 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 SODEXO / SODEXHO. Considering these elements, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Registration and Use in Bad Faith The Complainant contends that given the well-known character and reputation of the SODEXO/ SODEXHO mark, the Respondent most likely knew its existence when he registered the disputed domain name. In addition, the Complainant indicates that the word SODEXO is purely fanciful, and nobody could legitimately choose this word or any variation thereof, and particularly combined with the word "pass" which is used by the Complainant to designate its vouchers, unless seeking to create a confusion with the Complainant. Finally, the Complainant considers that the unauthorized registration of the disputed domain name by the Respondent and its passive holding, likely in the aim of fraudulent uses, are for the purpose of commercial gain and then constitute bad faith registration and use. 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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. page 4 A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant is the owner of several trademarks SODEXO, including the trademarks listed in Section 4 above. The trademark SODEXO is entirely reproduced in the disputed domain name. The addition of ".com" in the disputed domain name does not prevent confusing similarity. This is also the case for the additional terms "pass" and "belgium". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.11 and 1.8. The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark SODEXO in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names. This Panel notes that there is a possible identity theft issue, as the contact details disclosed by the Registrar for the Respondent, seems to be the name of one of the Complainant's employee, and is satisfied that it appears that the Complainant does not have any affiliation, association, sponsorship or connection with the Respondent and that he 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. Furthermore, the Respondent does not use the disputed domain name. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain names in bad faith. Regarding the international reputation of the SODEXO trademarks, the Respondent could not have ignored them at the time of the registration. The mere registration of a domain name that is identical or confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. In addition, the use of the fanciful word SODEXO combined with (i) the word "pass" which the Complainant massively uses to identify its vouchers and (ii) the country name "belgium" where it is among others located could only have been chosen to create a confusion with the Complainant. Then, the Respondent is not currently using the disputed domain name. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). page 5 For all these reasons, it appears to this Panel that the disputed domain name incorporating the term "sodexo" which has no meaning and is confusingly similar to the Complainant's trademarks SODEXO has been registered and is being used in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also satisfied. 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 be transferred to the Complainant. /Christophe Caron/ Christophe Caron Sole Panelist Date: August 25, 2022
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