ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Name Redacted Case No. D2024-2185 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2024. On May 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 (Domain Admin) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 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 June 4, 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”). 1The Respondent appears to have used the name of a third party when registering the disputed 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Annex 1 to the Registrar as part of the order in this proceeding and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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 June 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2024. A third party sent an email communication to the Center on June 10, 2024. The Center notified the parties of the Commencement of Panel Appointment Process on July 11, 2024. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 2, 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 was founded in 1966 and 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. For the fiscal year 2023, the Complainant’s consolidated revenues reached EUR 22,6 billion. The Complainant uses its trademark in connection to various services, including food services and facility management services. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark. In 2008, the Complainant simplified the spelling of its mark and name to SODEXO. The Complainant is the holder of registered trademarks consisting of the word SODEXO in various jurisdictions throughout the world, including the following: - the International Trademark for SODEXO (figurative mark) with registration number 964615 registered as of January 8, 2008 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, - the International Trademark for SODEXO (word mark) with registration number 1240316 registered as of October 23, 2014 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, - Panama trademark registrations nos.167186-01, 167188-01, 167191-01, 167193-01, 167194-01, 16719501, 167196-01, 167197-01, 167198-01, 167199-01, 167200-01, 167201-01 all for SODEXO (figurative mark) and registered on December 12, 2007. The Complainant also owns numerous domain names corresponding to and/or containing SODEXO, including , , , . The disputed domain name was registered on April 24, 2024 and the disputed domain name resolved to a login website prominently displaying the Complainant’s trademark and requiring the Internet users to “[e]nter your Sodexo user name and password”, and is currently not in use. 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. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 However, an email was by a third party sent to the Center stating: “We’ve received a letter in the mail regarding a complaint over the domain name: sooddexo.com [Name Redacted] has never purchased, owned, or sold the domain name. Furthermore, we do not have any affiliation, use, or purpose to the domain. Our only determination has been that our registered office address could been fraudulently used when registering this domain name.” 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (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 with respect to 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 Panel finds the mark is recognizable 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. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9. In this case the Respondent has added the letters “o” and “d” to the trademark SODEXO. 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. Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, phishing, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. 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. In the present case, the Panel notes that - The trademark SODEXO is fanciful, and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and mark SODEXO. - Another aspect is the consensus view of UDRP panels that the practice of typosquatting (“sooddexo” instead of “sodexo”) may in itself be evidence of a bad faith registration of a domain name (see WIPO Overview 3.0, section 3.2.1). - The disputed domain name is almost identical to the Complainant’s well-known trademark. The Respondent must have been aware of the Complainant when the Respondent registered the disputed domain name. The Panel agrees with the Complainant that the Respondent by registering the Complainant’s trademark in the disputed domain name was seeking to create a likelihood of confusion with the trademark to mislead third parties. The registration under a privacy service may further indicate bad faith. See WIPO Case No. D2020-1829, Sodexo v. May Bae. Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, phishing, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed domain name (adding the letters “o” and “d” for creating a typosquatted version of the trademark), and the previous use of the disputed domain name in connection with the login website impersonating the Complainant, and finds that in the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. 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 disputed domain name be transferred to the Complainant. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: August 16, 2024.
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