WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Julien Jimenez

Case No. D2021-1414

1. The Parties

The Complainant is Sodexo, France, represented by Areopage, France.

The Respondent is Julien Jimenez, France.

2. The Domain Name and Registrar

The disputed domain name <sodexho-de.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2021, 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, and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2021, 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 May 11, 2021.

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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 15, 2021. 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 that was previously called Sodexho Alliance and that is one of the largest companies in the world specialized in foodservices and facilities management.

The Complainant was founded in 1966 and, with 470,000 employees serving 100 million consumers in 67 countries, is one of the largest employers worldwide.

The consolidated revenues of the Complainant reached EUR 22 billion in 2019.

From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name, and then simplified it to SODEXO.

For the needs and purposes of its activities, the Complainant is the owner of numerous trademarks (thereafter the “SODEXHO and SODEXO trademarks”) such as:

- the French word trademark SODEXHO n°1249935, registered on November 4, 1983 for products and services in classes 5, 29, 30, 31, 32, 33, 35, 36, 37, 39, 41, 42, 43 and 45 and duly renewed;

- the French semi-figurative trademark SODEXHO n°96654774, registered on December 10, 1996 for products and services in classes 16, 29, 30, 31, 32, 33, 35, 36, 37, 39, 40, 41, 42, 43, 44 and 45 and duly renewed;

- the French semi-figurative trademark SODEXO n°3513766, registered on July 16, 2007 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 and duly renewed;

- the international semi-figurative trademark SODEXO n°964615, registered on January 8, 2008 under priority of the French trademark SODEXO n°3513766 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 and duly renewed;

- the international word trademark SODEXO n°1240316, registered on October 23, 2014 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;

- the international semi-figurative trademark SODEXHO n°689106, registered on January 28, 1998 based on the French trademark SODEXHO n°96654774 of December 10, 1996 for products and services in classes 16, 36, 37, 39, 41and 42 and duly renewed;

- the international semi-figurative trademark SODEXHO n°694302, registered on June 22, 1998 under priority of the French trademark SODEXHO n°98714920 of January 27, 1998 for products in class 9 and duly renewed;

- the European Union word trademark SODEXO n°008346462, registered on February 1, 2010 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;

- the European Union semi-figurative trademark SODEXO n°006104657, registered on June 27, 2008 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 and duly renewed;

- the international semi-figurative trademark SODEXO QUALITY OF LIFE SERVICES n°1195702, registered on October 10, 2013 based on European Union trademark registration n°011138501 of January 22, 2013 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

- the European Union semi-figurative trademark SODEXO QUALITY OF LIFE SERVICES n°011138501, registered on January 22, 2013 for products and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 and duly renewed;

The disputed domain name <sodexho-de.com> was registered by the Respondent on September 6, 2019.

At the time of the Complaint as well as at the time of the Decision, the disputed domain name pointed to a page that lists domain names.

The Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant stands that the disputed domain name is identical or confusingly similar to its SODEXHO and SODEXO trademarks, since it is composed of an exact reproduction of the Complainant’s trademark SODEXHO or an almost identical reproduction of the Complainant’s trademark SODEXO, to which have been added the letters “de”, with an hyphen between them, and the suffix “.com”.

The Complainant underlines that the sole difference between the disputed domain name and its trademarks is the adjunction of the letters “de”, which are a reference to Germany so that the disputed domain name is understood as referring to the activities or projects of the Complainant in Germany, this addition being obviously not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.

The Complainant also insists on the strong worldwide reputation of the SODEXHO and SODEXO trademarks, whose well-known character was already recognized by several decisions of the WIPO UDRP panels.

Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has no rights on the SODEXHO and SODEXO signs as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights, and that the Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the SODEXHO or SODEXO corporate name, business name and mark.

Moreover, the Complainant argues that 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 disputed domain name and to use it.

At least, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith, arguing that due to the well-known character and reputation of the SODEXHO and SODEXO trademarks, particularly in France where the Respondent is located, the Respondent most likely knew the existence of the SODEXHO and SODEXO trademarks when registering the disputed domain name.

The Complainant also considers that the SODEXHO and SODEXO trademarks are purely fanciful and that nobody could legitimately choose this word or any variation thereof unless seeking to create an association with the Complainant.

The Complainant adds that the Respondent wanted to benefit from the reputation of the SODEXHO and SODEXO trademarks, since it is obvious that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in these trademarks very likely for the purpose of creating confusion with these trademarks to divert or mislead third parties for the Respondent’s illegitimate profit.

The Complainant further states that even if the disputed domain name may not presently have any active content, a passive holding of a domain name does not prevent a finding of bad faith, in particular in consideration of the strong reputation and well-known character of the Complainant’s marks, the lack of evidence provided by the Respondent of any good faith use with regard to the disputed domain name and the identity or confusing similarity of the disputed domain name with the Complainant’s name and mark intended to divert or mislead potential web users from the Complainant’s website they are actually trying to visit, such circumstances applying to the present case.

The Complainant finally recalls that bad faith use may result from the threat of an abusive use of the disputed domain name at issue by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the SODEXHO and SODEXO trademarks.

Then, the Panel notices that the disputed domain name is composed of the exact reproduction of the SODEXHO trademark and the almost identical reproduction of the SODEXO trademark, to which have been added (i) the letters “de”, (ii) a hyphen between the reproduction of the SODEXHO and SODEXO trademarks, and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially 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. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel believes that the whole and exact reproduction of the SODEXHO trademark or almost identical reproduction of the SODEXO trademark in the disputed domain name makes the disputed domain name confusingly similar to the SODEXHO and SODEXO trademarks, and that the mere addition of the letters “de”, separated from the SODEXHO and SODEXO trademarks by a hyphen, does not avoid such confusion.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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 prima facie 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has never 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.

In addition, none of the circumstances set forth in paragraph 4(c) of the Policy appear to be met in this case.

However, the Respondent did not reply to the Complainant’s contentions to rebut the prima facie case.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <sodexho-de.com>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including:

(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.

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name, and that the Respondent knew or should have known the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given their strong and worldwide reputation, and the fact that the disputed domain name wholly and identically reproduces the SODEXHO sign, which moreover is the previous version of the Complainant’s trade name and mark, or almost identically the SODEXO sign, which is the actual version of the Complainant’s current trade name and mark, having only added the letters “de”, separated from the Complainant’s trademarks by a hyphen, which can be considered as referring to the Complainant’s activities in Germany.

This exact or almost identical reproduction of the Complainant’s trademarks results in the misleading of Internet users seeking information or wishing to enter into a relationship with the Complainant (see, for example, Puravankara Projects Limited v. Saurabh Singh, WIPO Case No. D2014-2054).

Then, the Panel finds that the disputed domain name is not currently used actively, given that it points to a page that lists domain names, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Indeed, the Panel considers that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:

- the strong and worldwide reputation of the SODEXHO and SODEXO trademarks;
- the fact that there is no evidence of any intent of the Respondent to use the disputed domain name, nor of any beginning of such use in good faith;
- the lack of rights or legitimate interests of the Respondent in respect of the disputed domain name;
- the fact that the Respondent has not provided any answer to the Complainant’s contentions;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

Finally, the Panel finds that the Respondent only registered and uses the disputed domain name in order to divert or mislead Internet users to its website for illegitimate profit.

Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 <sodexho-de.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: June 29, 2021