ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SODEXO v. co lee, SODEXO Case No. D2024-4285 1. The Parties The Complainant is SODEXO, France, represented by Areopage, France. The Respondent is co lee, SODEXO, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2024. On October 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 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 October 22, 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 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2024.
page 2 The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 20, 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 set up in 1966, providing food services and facilities management with 430.000 employees in 45 countries. The Complainant is the owner of a portfolio of registered trademarks for SODEXO in different jurisdictions. By way of example: International trademark with registration number 964615, registered on January 8, 2008. European Union with registration number 006104657, registered on June 27, 2008. SODEXO trademark is to be considered well-known for UDRP purposes. The Complainant is the owner, amongst others, of the following domain names: , , . The disputed domain name was registered on October 10, 2024 and resolves to a page under construction. 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 Respondent registered the disputed domain name by using the typo-squatting technique. Accordingly, says the Complainant, the addition of the letters “r” and “g” do not avoid creating confusing similarity between the mark and the disputed domain name. Further, the Complainant alleges that none of the circumstances depicted in paragraph 4(c) of the Policy applies in this case. The Respondent registered the disputed domain name under the name “SODEXO” for the purpose of impersonating the Complainant. Besides, the registration is a fraudulent attempt to impersonate a purported employee of the Complainant which is deemed to be a domain name registration in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
page 3 (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the disputed domain name registrant as a condition of registration. 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 Panel finds the mark is recognizable within the disputed domain name. The addition of letters “r” and “g” to the Complainant’s mark is a typo-squatting that give the false impression to be an abbreviation of “org”. That is to say, as if we were in the presence of an organization linked to the mark when that is not the case. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. 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 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. Indeed, none of the circumstances described in paragraph 4(c) of the Policy can be inferred from the file. Furthermore, the Panel notes that the composition of the disputed domain name incorporating the Complainant’s trademark and additional two letters give the false impression to be part of the Complainant organization which carries a risk of user confusion.
page 4 The Panel finds the second element of the Policy has been established. C. Registered and Used 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. The Panel finds that the Respondent targeted the Complainant and its trademarks when registering the disputed domain name. On balance, the Respondent knew or should have known about the Complainant and its trademarks. For such, the Panel notes that the nature of the domain name, the distinctiveness and well-known value of SODEXO trademark are relevant to this finding. Further, since the Respondent tried to impersonate a purported employee of the Complainant when registering the disputed domain name, whose identity is invented, the Panel finds that such attempt is evidence that the Respondent had previous knowledge of the Complainant and its trademarks. Accordingly, the Panel concludes that the disputed domain name falls within what is deemed to be considered bad faith registration. Panels have found that the non-use of a domain name (including “coming soon” or “under construction” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case 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. 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. /Manuel Moreno-Torres/ Manuel Moreno-Torres Sole Panelist Date: December 4, 2024
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