ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SODEXO v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2024-2378 1. The Parties The Complainant is SODEXO, France, represented by Areopage, France. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 June 11, 2024. On June 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 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 14, 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 June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2024. The Center appointed Mihaela Maravela as the sole panelist in this matter on July 17, 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 According to information in the Complaint, 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, 167195-01, 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 June 5, 2024 and it resolves to a website displaying a pay-per-click (“PPC”) advertising page containing third party links. 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 consists of the Complainant’s trademark SODEXO and the mark SHAREPOINT owned by Microsoft and the word “sodexo” is clearly perceived by consumers as the predominant part of the disputed domain name. The addition of the element “sharepoint” is inoperative to distinguish it from the Complainant’s SODEXO mark. Moreover, the Complainant uses the subdomain for its internal portal. As regards the second element, the Complainant argues that the Respondent has no rights on SODEXO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights. The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO. With respect to the third element, the Complainant argues that the trademark SODEXO is purely fanciful and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant’s activities and SODEXO mark. Given the well-known character and reputation of the SODEXO trademark of the Complainant, the Respondent knew of its existence when she registered the disputed domain name, so that she perfectly knew that she had no rights or legitimate interests in the disputed domain name and that she cannot lawfully use it. As regards the use, the Complainant submits that the Respondent is using the disputed domain name for pay-per-click parking website to attract Internet users and to incite them to click on third parties’ commercial links. Also, the Respondent was involved in
page 3 numerous domain name disputes in which UDRP panels ordered the transfer of domain names she registered and which were reproducing marks owned by third parties, including those of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings No response has been received from the Respondent in this case. The Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 3.0, section 1.7. It is the settled view of panels applying the Policy that the Top-Level Domain (“TLD”) (here “.com”) should be disregarded under the first element test. The Complainant has shown rights in respect of the trademark SODEXO 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. The Panel finds that the Complainant’s trademark is recognizable within the disputed domain name, the addition of third-party mark SHAREPOINT does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.12. 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
page 4 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. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. According to the unrebutted evidence adduced by the Complainant, the disputed domain name is used to host a parked page comprising PPC links. According to section 2.9 of the WIPO Overview 3.0 “applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links 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.” The Panel notes that the Complainant uses the subdomain name , therefore, the composition of the disputed domain name will mislead the consumers into believing that the disputed domain name is related to the Complainant. Considering the above, and also for the reasons in section C below, in the Panel’s view, such use does not confer rights or legitimate interests on the Respondent. 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. According to the unrebutted assertions of the Complainant, its SODEXO trademarks were widely used in commerce well before the registration of the disputed domain name and are reputed. The disputed domain name is confusingly similar with the Complainant’s trademarks. Also, according to the unrebutted facts in the Complaint, the Respondent has previously targeted the Complainant through repeated registration of domain names that are identical/confusingly similar to the Complainant’s mark and such registrations have been challenged by the Complainant through the filing of complaints under the Policy. Under these circumstances, the Panel considers that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademark As regards the use of the disputed domain name, from the evidence on file and not rebutted by the Respondent, it results that the disputed domain name redirects Internet traffic to a website displaying PPC advertisements. Given the confusing similarity between the Complainant’s SODEXO trademark and its subdomain name and the disputed domain name, and that the website appears to be used for commercial gain of the Respondent or of the operators of those linked websites, or both, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s SODEXO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy.
page 5 Also, there appears to be a pattern of abusive registrations by the Respondent, as the unrebutted information on file shows that the Respondent was involved in numerous other UDRP proceedings where similar factual situations caused the concerned UDRP panels to decide in favor of the complainants, (see e.g., CK Franchising, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2022-2217), including of the Complainant in this case (see e.g. Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2024-0794). Moreover, the Respondent has not formally participated in this proceeding and has failed to rebut the Complainant’s contentions and to provide any evidence of actual or contemplated good faith use. 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.1 /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: July 26, 2024 1The transfer of the disputed domain name shall be ordered without prejudice to any rights of the third-party holder of the SHAREPOINT trademark in the disputed domain name.
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