ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Jaga Jagadeesh, no Case No. D2024-1516 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Jaga Jagadeesh, India. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2024. On April 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 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 April 11, 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 April 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2024. The Center appointed Lorenz Ehrler as the sole panelist in this matter on May 22, 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 multinational company specialised in food services and facilities management with headquarters in France. It employs about 430,000 people worldwide and is present in 45 countries. The Complainant owns numerous trademarks, in particular: - International trademark SODEXO (figurative), registration no. 964615, registered on January 8, 2008, and designating numerous countries on different continents; - India trademark SODEXO (combined), registration no. 1635770, registered on December 28, 2007. The Complainant also registered different domain names, in particular , , and , which resolve to its main website or to regional websites, respectively. The disputed domain name was registered by the Respondent on April 5, 2024, and is thus clearly posterior to the Complainant’s trademarks. The Respondent used the disputed domain name for a parking page which contained, among other things, pay-per-click (“PPC”) links to websites of Complainant’s direct competitors for food and delivery services, and vending machines. 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 the SODEXO trademarks. Furthermore, the Complainant states that the Respondent is not affiliated with them and that no license has been granted to the Respondent to use the Complainant’s trademark. Also, the Respondent does not use the disputed domain name for any fair use. Lastly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith, in particular for operating a parking page which contains links to competitors’ websites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) The disputed domain name registered by the Respondent 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
page 3 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 elements, here “co”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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. 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. Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parking page comprising PPC links, as is the case here, does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith. The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorisation to use the Complainant’s trademarks. Respondent registered the disputed domain name well after the Complainant’s trademark was in use. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when registering the disputed domain name. This Panel considers that the disputed domain name for itself is a strong indication that the Respondent was aware of the Complainant’s trademark SODEXO, as it seems
page 4 more than unlikely that the Respondent would have created -randomly- the disputed domain name that is almost identical with the Complainant’s distinctive trademark and confusingly similar to the domain name , (cf. Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii, WIPO Case No. D2016-2632). Also, the Panel notes, in line with the Complainant’s statements, that SODEXO is a fanciful word and that due to its longstanding and widespread use it has gained at least a certain level of reputation. Previous UDRP Panels have also recognised that the trademark SODEXO is well known (cf. Sodexo v. Privacy service provided by Withheld for Privacy ehf / Cheval Blanc, WIPO Case No. D2022-1588). Furthermore, based on the record, the Panel finds that the use to which the disputed domain name has been put to evidences the Respondent’s bad faith. Indeed, it results from the Panel’s factual findings that Respondent is using the disputed domain name to display links to third party offers, including to competitors’ offers, and that it thereby intends to generate commercial revenue. The Panel therefore finds that by using a domain name that is confusingly similar to the Complainant’s trademark to redirect Internet users to third party websites, Respondent creates a likelihood of confusion, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy. 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. /Lorenz Ehrler/ Lorenz Ehrler Sole Panelist Date: June 5, 2024
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