ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. abid khan Case No. D2024-3619 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is abid khan, India. 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 September 6, 2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 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 (“Registration Private, Domains By Proxy, LLC”) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 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 September 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2024.
page 2 The Center appointed Stefan Abel as the sole panelist in this matter on October 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. 4. Factual Background The Complainant is a France-based company which is active in food services and facilities management. According to its fiscal report of 2023 the Complainant serves daily 80 million consumers in 45 countries by 430,000 employees. Its worldwide yearly revenues have exceeded 20 billion euros in 2023. The Complainant owns numerous trademarks registered for services in the above-mentioned sector, including the international trademark registration no. 964615 SODEXO filed and registered on January 8, 2008, claiming protection (inter alia) for China, the European Union, the Russian Federation, Japan, and the United States of America; and, the Indian trademark registration no. 1635770 SODEXO (combined) applied for and registered on December 28, 2007. The term SODEXO represents the business name of the Complainant. The Complainant promotes its services under numerous Internet domain names containing its company name and trademark such as . The disputed domain name was registered on September 3, 2024. It resolves to a parking page containing links to advertisings, including a link to a website promoting the same services (in particular services for personal and home services) offered by a third party (CESU). 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 it was founded in 1966 already under its prior company name SODEXHO. The company name has been changed for spelling reasons into the company name SODEXO in 2008. These company names have a strong reputation and are widely known all over the world which has been confirmed by numerous WIPO panel decisions already. The disputed domain name will be perceived as the Complainant’s official website for its services in India as it is composed of its company name SODEXO associated with the geographic element “India” and the descriptive word “services”. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark. The Respondent has no rights and no legitimate interest in the disputed domain name. The Respondent is not affiliated, associated, sponsored or otherwise connected 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. The disputed domain name was registered and has been used in bad faith. The sign SODEXO is purely fanciful and has no meaning so that nobody could legitimately choose this term and any variation thereof, unless seeking to create an association with the Complainant’s activities, company name and trademarks. Given the well-known character and reputation of the Complainant’s SODEXO-sign the Respondent must have been aware of its existence when registering the disputed domain name so that bad faith registration and use may be inferred in accordance with previous UDRP decisions.
page 3 Further, the Respondent is using the disputed domain name by exploiting the confusion with the well-known Complainant’s trademark and company name to attract Internet users and to incite them to click on Complainant’s competitor’s commercial links. Such pay-per-click (“PPC”) links reflect bad faith registration and use according to the UDRP policy and WIPO case law on the UDRP policy. In addition, the Complainant must strongly fear fraudulent use of the disputed domain name, notably to perpetrate e-mails scam sent to its clients requesting payment of false invoices on fake SODEXO bank accounts. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant established each of the following elements set out in paragraph 4(a) of the Policy: (i) The Respondent’s 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 interest in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith. A. Identical or Confusingly Similar The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks SODEXO (with device). The disputed domain name consists of this distinctive trademark in combination with the terms INDIA and SERVICES. The Panel finds that INDIA SERVICES, when preceded by the Complainant’s trademark, is perceived by the public as purely descriptive elements indicating its services in India. The addition of the generic terms “INDIA” and “SERVICES” therefore do not prevent confusing similarity. Similarly, the gTLD “.com” does not affect the finding of confusion similarity. gTLDs are in general not considered as an identifier of the website as to its owner or its operator. Reasons for possible exceptions to this rule, such as the inclusion of the gTLD by the disputed second level domain name to form a conceptual whole, are not apparent. The Panel finds the paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name. The element SODEXO of the disputed domain name does not have any apparent generic or descriptive meaning and the term SODEXO is not used as a designation for a person or a company other than the Complainant or for services or products other than those provided by the Complainant.
page 4 Rather, the Respondent apparently uses the disputed domain name in a misleading manner. The disputed domain name is not actively used and resolves to a parking site only containing advertising links, inter alia to competitor’s services. The Panel therefore finds that the Complainant has met the element of paragraph 4(a)(ii) of the Policy. The Complainant has successfully made out a prima facia case. The evidentiary burden therefore shifts to the Respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interest in the disputed domain name. See, e.g., Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Respondent has failed to do so. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or for noncommercial purposes. The Respondent is not known by the disputed domain name and has failed to demonstrate the acquisition of any trademark or service mark in the name SODEXO. C. Registered and Used in Bad Faith The Panel finds that the Complainant has established the element of paragraph 4(b)(iv) of the Policy, too, for the following reasons: The term SODEXO is not descriptive in a language of the country where the Respondent is located. The Complainant’s non-descriptive company name and trademarks SODEXO are well-known in many areas of the world. The Complainant has used the sign SODEX(H)O as its business identifier and trademark for many decades before the disputed domain name has been registered. The disputed domain is identical to the Complainant’s business name and trademarks SODEXO; the only difference are the generic terms “India” and “services” added to SODEXO, which may easily be understood as identifying the Complainant’s location of its services. The Respondent does not make any use of the disputed domain name for a particular business; there is only a parking site accessible under the disputed domain name, containing several advertising links. In the Panel’s view, Internet users are likely to get the idea that the Respondent’s site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. That likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to other commercial websites, including to the Complainant’s competitors websites. The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its services is obvious to the Panel considering that no rights or legitimate interest in using the disputed domain name are apparent, that the Complainant’s trademarks and company name have been registered and used decades before the registration of the disputed domain name, that SODEXO is a well-known trademark and business identifier in many countries all over the word and that the Complainant has registered trademarks in the country where the Respondent is located, too. The Panel concludes, that by using the disputed domain name for a parking site, the Respondent has intentionally attempted to attract, for a commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s SODEXO trademarks as to the source, sponsorship and affiliation of the website (paragraph 4(b)(iv) 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. /Stefan Abel/ Stefan Abel Sole Panelist Date: November 14, 2024
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