ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Taylor Lin Case No. D2024-2643 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Taylor Lin, France. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2024. On June 28, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 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 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2024. The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 8, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the French company, founded in 1966 in Marseille, under the name Société d’Exploitation Hotelière. During the 1970s, the company expanded in France and internationally, and its name changed to Sodexho Alliance. In 2008, Sodexho Alliance further simplified its name as Sodexo. The Complainant is currently one of the largest companies in the world specialized in food services and facilities management. It has around 430,000 employees, in 45 countries, serving 80 million consumers daily. In the fiscal year 2023, the Complainant had consolidated revenues of over EUR 22.6 billion, which represent by region: 46% North America, 36% Europe, and 18% for the rest of the world. The Complainant holds an extensive portfolio of registrations for SODEXO, including the European Union trade mark No. 008346462, registered on February 1, 2010. In support of its activities, the Complainant also owns and uses a vast portfolio of domain names, including the domain name . The trade mark SODEXO is widely known in France where the Complainant is located, and all over the world where the Complainant provides a wide range of services under this trade mark, mostly to deliver on-site food services, but also benefit and reward services, and also personal and home services. The Complainant has been successful in numerous previous UDRP complaints in which its SODEXO trade mark has been assessed as being both well-known and highly distinctive. See for example Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-3412; Sodexo v. Contact Privacy Inc. Customer 1247189803 / NorAm Accounts Receivable, WIPO Case No. D2020-1683; Sodexo v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1762; SODEXO v. Zhichao Yang (杨智超), WIPO Case No. D2020-2286; Sodexo v. Lloyd Group, WIPO Case D2021-1214; Sodexo v. Privacy service provided by Withheld for Privacy ehf / Cheval Blanc, WIPO Case No. D2022-1588; and Sodexo v. chengao, WIPO Case No. D2023-1894. The disputed domain name was registered on June 18, 2024, and does not redirect to an active website. However, the Complainant states that it has been informed that the disputed domain name has been used as an email address for phishing. This has not been proven by the Complainant. 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 identical or confusingly similar to the registered trade marks SODEXO. The disputed domain name incorporates the trade mark SODEXO in its entirety. The addition of the English word “groups” is inoperative to distinguish it from the Complainant’s trade marks. Indeed, the risk of confusion or association is further increased as the Complainant is composed of numerous entities forming the “Sodexo Group” and the trade mark SODEXO remains dominant in the disputed domain name and keeps its individuality and distinctive character. The public will undoubtfully believe that the disputed domain name comes from SODEXO group or is linked to SODEXO. Furthermore, previous decisions already found that the following domain names, using SODEXO associated with the word “group” were confusingly similar to the Complainant’s trade marks:
page 3 - (see Sodexo v. Franck Galan, WIPO Case No. DEU2021-0040); - (see Sodexo v. franck Gauthier, WIPO Case No. D2021-3746); and - (see Sodexo v. DomainJet, Inc., Jack Sun, WIPO Case No. D2013-2187). Then, the Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is registered in the name of an individual who is unknown to the Complainant. The Respondent has no rights on SODEXO as corporate name, trade name, shop sign, trade mark, or domain name that would be prior to the Complainant’s rights on SODEXO. 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 trade mark SODEXO. Moreover, the Respondent does not have 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. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The sign 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 trade mark SODEXO. The Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the trade mark SODEXO for the purpose of creating confusion with the Complainant's trade marks to divert and mislead third parties for the Respondent’s illegitimate profit. The Complainant claims that the Respondent was using the disputed domain name as a tool to perpetrate email scams. The Respondent requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and 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 trade mark 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 trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Although the addition of other terms, here “groups”, may bear on assessment of the second and third elements, the Panel finds the addition of such term[s] 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.
page 4 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. 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. - On the registration of the disputed domain name in bad faith: In the present case, the Panel notes that the Respondent reserved a domain name reproducing the Complainant’s registered trade mark followed by the word “groups”, which evokes an economic entity made up of several companies. The trade marks SODEXO are sufficiently distinctive and long-standing and it is inconceivable that the Respondent would have registered the disputed domain name without prior knowledge of these trade marks. The Complainant is made up of multiple entities around the world and is often referred to as a group, and the addition of the word “groups” confirms the Respondent’s knowledge of the Complainant and accentuates the risk of confusion. Besides, the Respondent has an address in France, where the Complainant is established. - On the use of the disputed domain name in bad faith: The Complainant solely bases its arguments on the phishing emails allegedly sent by the Respondent to third parties. However, this assertion is not substantiated by way of records or copies of the phishing/scam emails mentioned in the Complaint. Failing any evidence in support of the claim of phishing scheme in this case, the Panel is unable to uphold the sole claim made by the Complainant. However, the Panel finds, on its own motion, that the circumstances of this case allow a finding of bad faith on passive holding. Indeed, and pursuant to WIPO Overview 3.0, section 3.3: - the Complainant’s trade mark SODEXO is well-known; - the Respondent has configured the disputed domain name in a manner which makes it implausible to conceive its use in good faith by the Respondent;
page 5 - the Respondent has provided incomplete contact details. The address provided in a French city does not exist as such; - the Respondent has not responded to the Complaint. Accordingly, the Panel finds that the conditions for the recognition of a registration and use in bad faith are met here. 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. /Benjamin Fontaine/ Benjamin Fontaine Sole Panelist Date: August 21, 2024
Full & Egal Universal Law Academy