ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SODEXO v. Warlich Thilo Case No. D2024-2634 1. The Parties The Complainant is SODEXO, France, represented by Areopage, France. The Respondent is Warlich Thilo, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with Key-Systems GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2024. On June 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 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 July 2, 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 July 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2024. The Center appointed Felipe Claro as the sole panelist in this matter on August 5, 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 Founded in 1966, the Complainant is one of the largest companies in the world specialized in food services and facilities management intended to improve the quality of daily life, with 430,000 employees serving daily 80 million consumers in 45 countries. The Complainant is one of the largest employers worldwide. For fiscal year 2023, consolidated revenues reached EUR 22,6 billion which represent by region: 46% North America, 36% Europe, and 18% for the rest of the world. The Complainant is listed as one of “The World’s Most Admired Companies” by FORTUNE Magazine. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark. In 2008, the Complainant simplified the spelling of its mark and changed its logo to provide a wide range of services under its mark SODEXO through an offer of on-site services. The Complainant owns, among others, the following registered marks: - SODEXO, International trademark registration No. 964615 registered on January 8, 2008, renewed in 2018, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, protected in the following countries: Armenia, Australia, Azerbaijan, etc. - SODEXO, International trademark registration No. 1240316 registered on October 23, 2014 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 protected in the following countries: Iran (Islamic Republic of), Mozambique, and United Kingdom. - SODEXO, European trademark registration registered on February 1, 2010 registered under No. 008346462, renewed in 2019 in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. The disputed domain name was registered on June 10, 2024, and has been used to send fraudulent emails impersonating the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that it owns numerous trademarks and domain names corresponding to or containing SODEXO or SODEXHO. It promotes its activities among other means under the following domain names: , , , , , , , , and . The SODEXO mark has a strong reputation and is widely known all over the world. The well-known character of the SODEXO mark has been recognized by different panels. The Respondent has no rights nor legitimate interests in the disputed domain name. The disputed domain name was registered and it is used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard the Panel makes the following specific findings. 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. 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. Although the addition of other term here, “-sas”, 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 The Respondent has presented no rights on the disputed domain name prior to the Complainant’s rights on SODEXO. The Respondent is not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the famous mark SODEXO. The Respondent has not shown any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it. 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 as applicable to this case: phishing, 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 Complainant owns and uses the SODEXO mark since 2008 and such mark is well-known worldwide. Previous panels have found the Complainant’s mark to be distinctive and well-known. See Sodexo v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-0472; and Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-0485 . Given the well-known character and reputation of the SODEXO mark, the Respondent knew or should have known about its existence when it registered the disputed domain name and was aware that it had no rights or legitimate interests in the disputed domain name. Previous panel decisions have recognized that actual knowledge of the Complainant’s trademarks and activities at the time of the registration of the disputed domain name may be considered an inference of bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494. Previous panel decisions have considered that the registration of a domain name incorporating a well-known trademark by someone who has no connection whatsoever with the trademark is a clear indication of bad faith. See Sodexo v. Shahzan / PrivacyProtect.org, WIPO Case No. D2013-1308. The registration and use of the disputed domain name to send scam emails to mislead third parties constitute evidence of bad faith registration and use. The unauthorized registration of the disputed domain name by the Respondent and its registration in the aim of fraudulent use, constitute bad faith registration and use. 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. Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: phishing, 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. 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. /Felipe Claro/ Felipe Claro Sole Panelist Date: August 19, 2024
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