The Complainant is Sodexo, of France, represented by Areopage, France.
The Respondent is Franck Galan, of France.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 6, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 7, 2021, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2022. On December 11 and 20, 2021, and January 26, 2022, the Center received email communications from the Registrar-confirmed On-site contact.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 2, 2022. 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 ADR Rules, Paragraph B(5).
4. Factual BackgroundThe Complainant is a French company listed on Euronext, founded in 1966 by the late Mr. Pierre Bellon, which is one of the world leaders in food services and facilities management, serving 100 million consumers in 64 countries, with a consolidated turnover in 2020 of EUR 19,3 billion.
The Respondent is apparently located in France.
The Complainant owns rights in a large portfolio of SODEXO trademarks, including inter alia French trademark registration No. 073513766 of July 16, 2007, international trademark registration no. 964615 filed on January 8, 2008, European Union trademark filed on July 16, 2007 registered under No. 006104657, European Union trademark filed on June 8, 2009 registered under No. 008346462, European Union trademark filed on August 23, 2012 registered under No. 011138501, international trademark registration No. 1195702 filed on October 10, 2013 and international trademark registration No. 1240316 filed on October 23, 2014 (together referred to hereinafter as: “the Mark”).
In addition, the Complainant has registered a host of domain names, including inter alia
The disputed domain name
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is nearly identical and is confusingly similar, to the Mark, insofar as the disputed domain name,
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain name in bad faith and, by its passive holding, is also using it in bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Aspects: Admissibility of a request to transfer and failure to complyThe Panel finds that the Complainant satisfies the general eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002, as amended by Regulation (EU) No 2019/517, and thus that, pursuant to sub-paragraph B11(b) of the ADR Rules, the transfer of the disputed domain name is a remedy available to the Complainant.
Pursuant to sub-paragraph B11(a) of the ADR Rules, the Panel is empowered to decide a Complaint on the basis of the statements and documents submitted.
Under Paragraph B11(d) of the ADR Rules, it is the Complainant’s burden to establish that all of the required criteria for granting the remedy sought have been met.
Under the ADR Rules, sub-paragraph B10(a), a failure by the Respondent to comply with any time period is a ground to accept the claims of the Complainant. As noted above, the Respondent has failed to respond within the time period provided.
Under sub-paragraph B10(b) of the ADR Rules, the Panel is empowered to draw from the Respondent’s failure to comply such inferences as it considers appropriate, and under sub-paragraph B7(d) of the ADR Rules, the Panel is empowered to determine in its sole discretion the admissibility, relevance, materiality and weight of the evidence.
In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in sub-paragraph B11(e) of the ADR Rules or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of sub-paragraph B11(d) of the ADR Rules A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union lawIn comparing the Mark with the disputed domain name
It is well established that a ccTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name
Thus, the Complainant has satisfied the requirement of sub-paragraph B11(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate InterestsAlthough a complainant bears the ultimate burden of establishing all required elements of sub-paragraph B11(d)(1) of the ADR Rules, with regard to sub-paragraph B11(d)(1)(ii) of the ADR Rules, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the Panel’s view is that sub-paragraph B11(d)(1)(ii) of the ADR Rules shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case, based on the facts and arguments set out above. WIPO Overview 3.0, section 2.1.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise.
The nature of the disputed domain name is such that it carries a high risk of implied affiliation with the Complainant, seeing how the disputed domain name is nearly identical to the Mark, the only difference being the addition of a hyphen and the word “group”.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant and (ii) received no authorization from the Complainant to register or use the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of sub‑paragraph B11(d)(1)(ii) of the ADR Rules with respect to the disputed domain name.
C. Registered or Used in Bad FaithAs noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering a domain name nearly identical to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775.
In this case, given that many UDRP panels have declared the Mark to be famous or well-known (e.g. Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael,WIPO Case No. D2020-0865; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021; Sodexo v. Contact Privacy Inc. Customer 1247228940 / James Lehman,WIPO Case No. D2020-1281; Sodexo v. Registration Private, Domains By Proxy, LLC / Krissa Pucket,WIPO Case No. D2020-1315; 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,WIPO Case No. D2020-2286; SODEXO v. Ashutosh Dwivedi, Food & Beverages,WIPO Case No. D2020-2686; Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3085; Sodexo v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-0472; Sodexo v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-0485; Sodexo v. Daniela Ortiz, WIPO Case No. D2021-0628; Sodexo v. Yang Zhichao,WIPO Case No. D2021-0902; Sodexo v. Lloyd Group,WIPO Case No. D2021-1214 and Sodexo v. franck gauthier,WIPO Case No. D2021-3746), the Respondent could have known of it by a mere check of public databases.
The Panel thus finds it impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark.
The Panel notes that the disputed domain name is nearly identical to the Complainant’s Mark, which, in the absence of any explanation of the reasons for the registration by the Respondent, leads the Panel to infer that the disputed domain name was probably registered to take advantage of the Complainant’s goodwill in the Mark, and possibly for fraudulent purposes.
Prior UDRP panels have held that the passive holding of a domain name does not prevent a finding of bad faith, especially when its good faith use is in no way plausible, considering the specificity of the activity (see section 3.3 of the WIPO Overview 3.0) The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity and the composition of the disputed domain name.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel concludes, notably in the light of the Respondent’s electing not to provide any substantive defense of its position, that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of sub-paragraph B11(d)(1)(iii) of the ADR Rules is also satisfied in this case.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B11 of the ADR Rules, the Panel orders that the disputed domain name,
Louis-Bernard Buchman
Sole Panelist
Date: February 9, 2022
1 Noting the similarities between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the ADR Rules, the Panel has referred to prior UDRP cases and the WIPO Overview 3.0, where appropriate.