ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SODEXO v. willie charles Case No. DCO2024-0078 1. The Parties The Complainant is SODEXO, France, represented by AREOPAGE, France. The Respondent is willie charles, Canada. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2024. On October 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 (Redacted For Privacy / See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 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 23, 2024. The Center verified that the Complaint together with 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 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2024.
page 2 The Center appointed Martin Schwimmer as the sole panelist in this matter on November 19, 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 food services and facilities management companies in the world. It has around 430,000 employees in 45 countries, serving 80 million consumers daily. In 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, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; - SODEXO, European Union trademark registration No. 008346462, registered on February 1, 2010, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; and - SODEXO, European trademark registration No. 006104657, registered on June 27, 2008, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45. The Complainant claims it is also the registered proprietor of many domain names containing SODEXO, including: , , , , and . 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. The disputed domain name was registered October 11, 2024. The disputed domain name resolves to a website displaying pay-per-click ads, some of which keyed to food services management. 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 “us-” are obviously understood by consumers as the ISO Code for the United States. Therefore, the disputed domain name is understood as referring to the Complainant’s activities in the United States. The addition of the element “us-” in the disputed domain name is not sufficient to distinguish it from the Complainant’s mark. 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 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
page 3 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 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 its SODEXO trademark. 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. 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 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, “us-”, 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. 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
page 4 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. Numerous panels have held that the SODEXO mark is well-known. In the present case, the Panel notes that the Respondent knew or should have known of the Complainant’s reputation in its trademark. Here, the Panel notes that some of the pay-per-click ads appearing on the Respondent’s website pertain to the subject matter of the Complainant’s activities, specifically, food services and facilities management. Bad faith registration and use has been recognized when the disputed domain name resolves to parking pages containing pay-per-click sponsored links based on the trademark value of the domain names: Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Accordingly, 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. /Martin Schwimmer/ Martin Schwimmer Sole Panelist Date: December 3, 2024
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