ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Name Redacted Case No. D2024-3771 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 IONOS SE (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2024. On September 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 (sodexo limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 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 26, 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Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case.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 October 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2024. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 31, 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 French company founded in 1966, providing food services and facilities management in 45 countries. The Complainant is the owner of registered trademarks in the mark SODEXO, amongst which: International Trademark No. 964615 for , registered on January 8, 2008, in International Classes 9, 16, 35, 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; European Union Trademark No. 008346462 for SODEXO, registered on February 1, 2010, in International Classes 9, 16, 35, 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45; and International Trademark No. 1240316 for SODEXO, registered on October 23, 2014, in International Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. In addition, the Complainant owns domain names containing the SODEXO trademark, amongst which , , and . The disputed domain name was registered on September 11, 2024, well after the Complainant secured rights in the mark SODEXO. The disputed domain name previously redirected to the Complainant’s official United Kingdom (UK) website, however at the date of this decision, no longer directs to an active webpage. 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. With respect to the first element, the Complainant contends that it has rights in the mark SODEXO and that the disputed domain name is confusingly similar to this mark. The disputed domain name reproduces the well-known SODEXO mark in its entirety and is preceded by the letters “GB” which will be understood by consumers as the ISO code for Great Britain. In addition, the Complainant notes, the addition of the descriptive element “GB” is not sufficient to distinguish the disputed domain name from the Complainant’s SODEXO mark. Regarding the second element, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent has attempted to make the registration of the disputed domain name appear legitimate by registering the disputed domain name in the name of a director of the Complainant and having the disputed domain name redirect to the Complainant’s official UK website. However, the Complainant did not register the disputed domain name and had no part in the registration of the disputed domain name and its subsequent use, nor did the
page 3 Complainant authorize, license or otherwise permit the Respondent to do the same. Finally, the Complainant claims that the Respondent does not own any rights in SODEXO and is not commonly known by the disputed domain name either. As to bad faith registration, the Complainant claims that the Respondent must have been aware of the Complainant’s SODEXO mark since it is a purely fanciful mark with a well-known character and reputation, as confirmed by previous decisions of UDRP Panels. In further support of this claim, the Complainant also points to the fact that the disputed domain name previously redirected to the Complainant’s official UK website. Moreover, the Complainant notes that the fraudulent registration of the disputed domain name by impersonating one of the Complainant’s directors is a further indicator of bad faith registration. In respect of bad faith use, the Complainant points out that there is a threat of abusive use of the disputed domain name by the Respondent, namely for scams and phishing. 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 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 the trademark SODEXO for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the SODEXO 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. Although the addition of other terms, here “gb” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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. Finally, as for the applicable generic Top-Level Domain “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. 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
page 4 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 record does show that the Respondent has falsely registered the disputed domain name in the name of the Complainant’s UK company and one of its directors. Furthermore, the disputed domain name previously redirected to the Complainant’s official UK website without the Complainant’s permission. Panels have held that the use of a domain name for illegitimate or illegal activity, here impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Moreover, the Panel finds that the Respondent does not use the disputed domain name in connection with a bona fide offering of services and has neither made a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name previously redirected without the Complainant’s permission to the Complainant’s official UK website. Currently, the disputed domain name is not being actively used. In addition, the Complainant confirmed that the Respondent is not affiliated with the Complainant in any way nor has the Complainant licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. The Panel has taken note of the Complainant’s confirmation in this regard and has not seen any evidence that would suggest the contrary. Noting the composition of the disputed domain name, in the absence of any license or permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (see, e.g., Sportswear Company S.PA. v. Tang Hong, WIPO Case No. D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). Finally, while the Panel notes that the name “sodexo limited” appears in the WhoIs, it has already established that the Respondent has attempted to impersonate the Complainant when registering the disputed domain name. There is therefore no evidence that the Respondent has been commonly known by the disputed domain name or owns any registered trademarks in SODEXO. Based on the available record, 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. As the Panel found above under the first element, the mark SODEXO has been incorporated in its entirety in the disputed domain name and the disputed domain name is confusingly similar to the Complainant’s SODEXO trademarks. All the more, the Panel believes the addition of the terms “gb” and a hyphen does not reduce the confusing similarity since “gb” will likely be understood as a reference to the country Great Britain and therefore implies that the disputed domain name leads to the Complainant’s official UK website, which indeed it previously redirected to. Moreover, the Respondent has falsely registered the disputed domain name in the name of the Complainant’s UK company and one of its directors. This means that the registration of the disputed domain name has clearly been done to attract Internet users by creating a likelihood of confusion with the Complainant’s SODEXO trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name (paragraph 4(b)(iv) of the Policy).
page 5 Furthermore, it should be noted that 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 also 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. First of all, it is clear from the fact that the Respondent has falsely registered the disputed domain name in the name of the Complainant’s UK company and one of its directors that the Respondent knew at the time of registration that the disputed domain name included the Complainant’s SODEXO trademarks. Moreover, the Respondent’s knowledge of the Complainant and its SODEXO trademarks and therefore its registration in bad faith of the disputed domain name may also be inferred from the following circumstances. WIPO Overview 3.0, section 3.2.2. As demonstrated by the Complainant, prior panels have previously recognized that the SODEXO trademarks are well-known (see, for example: 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. Lloyd Group, WIPO Case No. D2021-1214; and Sodexo v. Cheval Blanc, WIPO Case No. D2022-1588). Other prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, Section 3.1.4). Finally, the Complainant’s evidence shows that the SODEXO trademarks were registered many years before registration of the disputed domain name in several countries. Second, panels have held that the use of a domain name for illegitimate or illegal activity, here impersonation/passing off by falsely registering the disputed domain name in the name of the Complainant’s UK company and one of its directors and (previously) redirecting the disputed domain name to the Complainant’s official UK website without the Complainant’s permission, constitutes bad faith. WIPO Overview 3.0, section 3.4. Third, in line with what has been found by prior panels under the doctrine of passive holding, the current non-use of the disputed domain name does not prevent a finding of bad faith use. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the available record and the decisions of prior UDRP panels, the Panel notes the distinctiveness and reputation of the Complainant’s SODEXO trademarks as well as the composition of the disputed domain name. In addition, the Panel notes the absence of a response from the Respondent and the Respondent’s impersonation of the Complainant during both registration and (prior) use of the disputed domain name. Finally, since the Respondent has impersonated the Complainant in registering and (previously) using the disputed domain name, it is highly implausible that the disputed domain name will be put to any good faith use in the future. In light of these circumstances, the Panel finds that the 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 6 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. /Benoit Van Asbroeck/ Benoit Van Asbroeck Sole Panelist Date: November 8, 2024
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