ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Domain Administrator, NameSilo, LLC Case No. D2024-0157 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Domain Administrator, NameSilo, LLC, France. 2. The Domain Name and Registrar The disputed domain name
is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2024. On January 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2024, 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 (PrivacyGuardian.org LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2024, 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 January 19, 2024. 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 January 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2024. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 16, 2024. 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.
page 2 4. Factual Background The Complainant is a worldwide known French company specialized in food services and facilities management. The Complainant is the owner of several trademarks, in particular the following trademarks (the “SODEXO Trademarks”): - the French figurative trademark No. 3513766 , registered on December 21, 2007, and duly renewed for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - the International figurative trademark No. 964615 , registered on January 8, 2008, and duly renewed for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; - the International word mark No. 1240316 SODEXO, registered on October 23, 2014, for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - the European Union word mark No. 008346462 SODEXO, registered on February 1, 2010, and duly renewed for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; and - The European Union figurative trademark No. 006104657 , registered on July 27, 2008, and duly renewed for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. The disputed domain name was registered on January 6, 2024, and resolves to a pay-per-click parking page containing links to third parties’ websites. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its SODEXO trademarks. The Complainant asserts that it owns several registered trademarks across the world that are well known, as recognized in several prior panel decisions. The Complainant submits that the disputed domain name incorporates the SODEXO trademarks in their entirety and that the adding of generic words, hereby “achat” (“purchase” in English) and “group”, is inoperative to distinguish the disputed domain name from the SODEXO trademarks. The Complainant highlights the fact the disputed domain name redirects to a parking page containing links to buy gift vouchers and may be used as part of a phishing scheme. Then, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not commonly known under the disputed domain name prior to the use by the Complainant of its corporate name and SODEXO trademarks. The Complainant states that the Respondent does not have any affiliation, association, sponsorship, or connection with the Complainant and that the Respondent was not authorized, licensed, or otherwise permitted to register the disputed domain name. Finally, the Complainant states that the disputed domain name was registered and is used in bad faith. The Complainant highlights that its SODEXO trademarks are purely fanciful and are well known. For the Complainant, the Respondent was aware of its existence when registering the disputed domain name. The Complainant asserts the Respondent is using the disputed domain name to attract Internet users and to incite them to click on its competitors’ commercial links. For the Complainant, this is an intentional attempt to attract for commercial gain, Internet users to its competitors’ websites. Finally, the Complainant asserts that
page 3 the Respondent is using the disputed domain name in bad faith since it can be used as part of a phishing scheme and other fraudulent uses. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “achat” (which means “purchases” in English) and “group”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Indeed, it appears that the Respondent is not commonly known by the disputed domain name and that the Respondent has no intent to use the disputed domain name with a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to a parked page comprising sponsored links. Furthermore, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the Respondent has registered the misleading disputed domain name well after the registration of the SODEXO trademarks. The Panel notes that the Respondent must have had the Complainant in mind when registering the disputed domain name since the SODEXO trademarks are well-known across the world. Furthermore, the disputed domain name resolves to a parking page containing pay-per-click links to third parties’ websites. The Panel finds that the Complainant has established the third element of the Policy. 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. /Christiane Féral-Schuhl/ Christiane Féral-Schuhl Sole Panelist Date: March 1, 2024
Full & Egal Universal Law Academy