ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SODEXO v. Name Redacted1 Case No. D2024-1915 1. The Parties The Complainant is SODEXO, France, represented by Areopage, France. The Respondent is Name Redacted. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2024. On May 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 8, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (“Contact Privacy Inc.”) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 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 May 13, 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”). 1 The Respondent appears to have used the name of an employee of the Complainant when registering the Domain Name. 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2024. The Center appointed Enrique Bardales Mendoza as the sole panelist in this matter on June 10, 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. 4. Factual Background The Complainant is one of the largest companies in the world specialized in food services and facilities management, with 430,000 employees serving daily 80 million consumers in 45 countries. The Complainant is the owner of numerous trademarks, including: - United Kingdom (“UK”) trademark SODEXO registered under Registration N° UK00800964615 on May 25, 2009, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. - UK trademark SODEXO registered under Registration N° UK00908346462 on February 1, 2010, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. - International trademark SODEXO registered under Registration N° 1240316 on October 23, 2014, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. - International trademark SODEXO registered under Registration N° 964615 on January 8, 2008, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. - European Union trademark SODEXO registered under Registration N° 006104657 on June 27, 2008, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. - International trademark SODEXHO registered under Registration N° 689106 on January 28, 1998, for goods and services in international classes 16, 36, 37, 39, 41 and 42. - International trademark SODEXHO registered under Registration N° 694302 on June 22, 1998, for goods in international class 9. The Complainant uses the domain names and to connect to the Complainant’s official website in the United Kingdom. The Domain Name was registered on January 24, 2024. On February 12, 2024, at the time of filing the Complaint the Domain Name was inaccessible. Subsequently, at the time of issuance of this decision, the Domain Name was no longer active. 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 Domain Name.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In a UDRP procedure, according to paragraph 4(a) of the Policy, the Complainant must establish the following elements: (i) the 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 Domain Name; and (iii) the 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 Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds 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 Panel finds the entirety of the mark is reproduced within the Domain Name. Accordingly, the 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 the term “UK” (which may mean “United Kingdom”), the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Lastly, the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name has no relevance in this case since it is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. Based on the available record, 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 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 Domain Name such as those enumerated in the Policy or otherwise. (i) First of all, the Respondent has not submitted any response and has not claimed any rights or legitimate interests with respect to the Domain Name. As per the Complaint, the Respondent was not authorized to register the Domain Name. (ii) Secondly, the Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. (iii) Thirdly, based on the available record, the Respondent is not commonly known by the Domain Name. Considering the above, there is no evidence on record giving rise to any rights or legitimate interests in the Domain Name on the part of the Respondent within the meaning of paragraph 4(c) of the Policy. Based on the available record, 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. The Panel concludes that the Respondent has registered and used the Domain Name in bad faith for the following reasons: (i) The SODEXO trademark had been widely used and registered by the Complainant before the Domain Name was registered. (ii) The Respondent could verify that the Complainant is the owner of the SODEXO trademarks by using a search engine for this purpose before registering the Domain Name. (iii) The Complainant and its trademarks are widely known and may have suffered bad reputation because the Domain Name incorporates the SODEXO trademark in its entirety and the previous use of the Domain Name. (iv) The Respondent used the name of an employee of the Complainant when registering the Domain Name. (v) The Domain Name resolves to an inactive webpage. The Panel finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. (vi) Further, the Panel finds that the lack of Response supports the Panel’s finding of bad faith. Based on the available record, the Panel finds that the Complainant has established the third element 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 Domain Name be transferred to the Complainant. /Enrique Bardales Mendoza/ Enrique Bardales Mendoza Sole Panelist Date: June 24, 2024
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