ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. Thomas Matthews Case No. D2024-3856 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is Thomas Matthews, the United Kingdom. 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 20, 2024. On September 23, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2204, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an informal email communication to the Center the same day. The Complainant filed an amended Complaint on September 25, 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 October 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2024. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 23, 2024. The same day, the Respondent sent an email communication to the Center.
page 2 The Center appointed Indrek Eelmets as the sole panelist in this matter on October 30, 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. 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. The Complainant owns a substantial portfolio of SODEXO trademarks, including: - SODEXO, International Trademark Registration No. 1240316, registered on October 23, 2014, designating among other countries the United Kingdom (“UK”); - SODEXO, European Union trademark registration No. 008346462, registered on February 1, 2010. The Complainant claims it is also the registered proprietor of many domain names containing SODEXO, including: ,, , , and . The Complainant provides a wide range of services under this trademark, 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 trademark 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 No. 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 September 18, 2024, and redirects to the Complainant’s official website in the United Kingdom at “www.uk.sodexo.com”. 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 trademarks SODEXO. The disputed domain name incorporates the trademark SODEXO in its entirety. The addition of the letters “uk” are obviously understood by consumers as the ISO Code for the United Kingdom. Therefore, the disputed domain name is understood as referring to the Complainant’s activities in the United Kingdom. The addition of the element “uk” in the disputed domain name is not sufficient to distinguish it from the Complainant’s marks. Further, the Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name. In this regard, it says 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
page 3 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. 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 concerned 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 mark 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 trademark SODEXO. The Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the trademark SODEXO for the purpose of creating confusion with the Complainant's trademarks to divert and mislead third parties for the Respondent’s illegitimate profit. The Respondent requests the transfer of the disputed domain name. B. Respondent The Respondent did not substantively reply to the Complainant’s contentions. The Center received two email communications from the Respondent, claiming that he does not understand the Center’s notifications, he does not own any websites and does not know how to obtain a website. 6. Discussion and Findings The Panel notes that the two communications received from the Respondent were sent from the relevant Registrar-confirmed email address for the registrant of the disputed domain name. The Panel notes that the respondent in a UDRP proceeding is the holder of a domain name registration against which a complaint is initiated, as per paragraph 1 of the Rules. In this regard, the Panel considers Thomas Matthews to be the appropriate Respondent in this proceeding. 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. Although the addition of other terms here, “uk”, 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 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 Respondent’s use of the Complainant’s mark in the disputed domain name that is nearly identical to the Complainant’s subdomain name to redirect users to the Complainant’s official website would not support a claim to rights or legitimate interests. 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. Panels have held that the use of a domain name for redirecting Internet users to the Complainant’s website can establish bad faith. WIPO Overview 3.0, section 3.1.4. 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. 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. /Indrek Eelmets/ Indrek Eelmets Sole Panelist Date: November 13, 2024
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