ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Host Master, Transure Enterprise Ltd Case No. D2023-1938 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Host Master, Transure Enterprise Ltd, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Above.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2023. On May 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2023, 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 (Above_privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2023 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 May 4, 2023. 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 May 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2023. The Center appointed Federica Togo as the sole panelist in this matter on June 5, 2023. 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 a French company that specializes in food services and facilities management. page 2 The Complainant is the registered owner of several trademarks consisting and/or containing SODEXO, e.g. European Union Trade Mark registration number 008346462 for SODEXO (word), registered on February 1, 2010 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force. International registration number 964615 for SODEXO, registered on January 8, 2008 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. This mark has been duly renewed and is in force. The disputed domain name was registered on April 26, 2023 and it redirects to random commercial websites. 5. Parties' Contentions A. Complainant It results from the Complainant's undisputed allegations that the Complainant was founded in 1966 and is one of the largest companies in the world specialized in foodservices and facilities management, with 422,000 employees serving 100 million consumers in 53 countries. It is widely established, among other places, in the United States of America where the Respondent is located. It is one of the largest employers worldwide and provides a wide range of services under its trade name and mark SODEXO through an offer of on-site services, benefit and reward services, and personal and home services. In addition, the Complainant operates the domain names , , , , , , , and in order to promote its activities. In particular, the Complainant owns and uses the domain name to connect to a webpage protected by a password for Savings Plan. The Complainant contends that its trademark SODEXO has a strong reputation and is widely known all over the world. The Complainant further contends that the disputed domain name is confusingly similar to its trademark SODEXO, since the disputed domain name is composed of the identical sign SODEXO associated to the English words MY and PLAN which are internationally understood by consumers and whose addition is not sufficient to distinguish it from the Complainant's marks. Due to the identical reproduction of the SODEXO mark, the public will believe that the disputed domain name comes from SODEXO group or is linked to the Complainant. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has no rights in SODEXO as a corporate name, trade name, shop sign, mark, or domain name that would be prior to the Complainant's rights on SODEXO. The Respondent was not commonly known by the disputed domain name. Moreover, it 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. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant's undisputed allegations, due to the well-known character and reputation of the Complainant's mark, the Respondent knew its existence when he registered the disputed domain name, so that he perfectly knew that he had no rights or legitimate interests in the disputed domain name and that he cannot lawfully use it. The Respondent not only knows the SODEXO mark but obviously wants to benefit of its reputation. By using the disputed domain name to point Internet users to random commercial websites, it is obvious that the Respondent wants to attract potential prospective customers. Furthermore, the Complainant provided evidence that the Respondent was the registrant of a large volume of trademark-abusive domain names and has been named as the respondent in several domain name proceedings where panels ordered transfer of the disputed domain names to the complainants. The Complainant therefore submits that the Respondent has engaged in a pattern of trademark-abusive domain name registration, targeting well-known trademark owners, further evidencing the Respondent's bad faith. page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided, that the Complainant is the owner of various trademark registrations for SODEXO as indicated in the Factual Background of this Decision. Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.7. This Panel shares this view and notes that the Complainant's registered trademark SODEXO is fully included in the disputed domain name, preceded by the term "my" and followed by the term "plan". Furthermore, it is the view of this Panel that the addition of the terms "my" and "plan" in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark since the Complainant's trademark is clearly recognizable in the disputed domain name (see WIPO Overview 3.0 at section 1.8). Finally, the generic Top-Level Domain ("gTLD") ".com" of the disputed domain name may be disregarded under the first element confusing similarity test as it is viewed as a standard registration requirement (see WIPO Overview 3.0 at section 1.11.1). In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any page 4 way with the Respondent and did, in particular, not authorize the Respondent's use of the trademark SODEXO, e.g., by registering the disputed domain name which is confusingly similar with the Complainant's trademark. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Moreover, the Panel notes that the disputed domain name contains the Complainant's registered and wellknown trademark SODEXO, and that the trademark SODEXO is not a term that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant's reputation by registering a domain name fully containing the Complainant's trademark and trade name with the intent to attract Internet users for commercial gain (see e.g., Bayer AG v. Privacy service provided by Withheld for Privacy ehf / farm construction, BAYERCROP POLAND, WIPO Case No. D2022-1043). It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0 at section 2.1). Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. It is the view of this Panel that these circumstances are met in the case at hand: The Respondent has been involved in a number of trademark-abusive domain name registrations (e.g. Aldi GmbH & Co. KG and Aldi Stores Limited v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-0116; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2022-4911; Equifax Inc. v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2022-4252; Vorwerk International AG v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2022-4237; Decathlon v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2022-4085). In the view of the Panel this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and is indicative of the Respondent's bad faith. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration, see WIPO Overview 3.0, section 3.1.2. The Panel considers that this is the case in the case at issue. Finally, based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant's trademark SODEXO is well known (e.g. Sodexo v. Daniela Ortiz, WIPO Case No. D2021-0628). Therefore, this Panel has no doubt that the Respondent positively knew or should have known of the Complainant's trademark when registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed SODEXO mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith, see WIPO Overview 3.0, section 3.1.4. Further, the Panel also finds that the Respondent's use of the disputed domain name in connection with redirections to various random websites amounts to bad faith under paragraph 4(b)(iv) of the Policy. In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. page 5 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. /Federica Togo/ Federica Togo Sole Panelist Date: June 19, 2023
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