WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Franck Eric Dumas

Case No. D2021-3521

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Franck Eric Dumas, France.

2. The Domain Name and Registrar

The disputed domain name <sodexo-belgium.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 October 26, 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 October 28, 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 November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2021.

The Center appointed Fabrice Bircker as the sole panelist in this matter on December 8, 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 which was founded in 1966.

It is one of the largest companies specialized in foodservices and facilities management, with 420,000 employees serving 100 million consumers in 64 countries. In 2020, its consolidated revenues reached EUR 19,3 billion .

From 1966 to 2008, the Complainant was running its business under the name SODEXHO, and it simplified its company name in 2008 to SODEXO.

The Complainant is the owner of many trademarks registrations constituted with SODEXO, such as:

, International trademark registration No. 964615 filed on January 8, 2008 (under priority of the French trademark No. 3513766 of July 16, 2007), renewed in 2018, designating products and services of classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, and notably protected in the United States of America, China, Israel, Japan, European Union; and

SODEXO, European Union Trade Mark registration No. 8346462, filed on June 8, 2009, registered on February 1, 2010 and protecting products and services of classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

The Complainant has also developed an online presence, in particular through its website, available via domain names such as <sodexo.fr> and <sodexo.com>.

Nothing is known about the Respondent excepting that, according to the information provided by the Registrar, it is located in France.

The disputed domain name was registered on October 11, 2021 and it redirects to the Complainant’s own website at the address <sodexo.fr>.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

First, the Complainant presents its business and its rights notably in the SODEXO registered trademark. In this respect, the Complainant contends that many UDRP panels have already found its SODEXO trademark well-known and enjoying a reputation.

Then, the Complainant notably submits that the disputed domain name is confusingly similar to its SODEXO trademark because the disputed domain name incorporates the Complainant’s trademark in its entirety. The Complainant adds that the addition of “belgium” and of the generic Top-Level Domain (“gTLD”) “.com” cannot prevent a finding of confusing similarity.

The Complainant contends that it has recently faced several attacks and therefore fears that the disputed domain name, which will be perceived as related with its official website in Belgium, may be used in a possible fraudulent scheme, notably to perpetrate email scam sent to its clients requesting payment of false invoices on fake Sodexo bank accounts.

In this respect, the Complainant contends that the Respondent has probably redirected the disputed domain name to the Complainant’s official website in order to deceive Internet users into believing that said disputed domain name is legitimately used by the Complainant.

Rights or Legitimate Interests

The Complainant claims that the Respondent has no rights nor legitimate interests in the disputed domain name as it has no rights in “sodexo” as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights on the SODEXO trademark.

The Complainant also argues that 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 trademark SODEXO / SODEXHO.

At last, 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.

Registered and Used in Bad Faith

First, the Complainant contends that due to the well-known feature and reputation of its trademark SODEXO / SODEXHO, the Respondent most likely knew its existence when he registered the disputed domain name and also knew that he had no rights or legitimate interests in the disputed domain name.

The Complainant also argues that the word SODEXO is purely fanciful, and that nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.

Besides, the Complainant argues that the “Respondent is using the disputed domain name by exploiting the confusion with the well-known mark SODEXO / SODEXHO to make the public believe that it is legitimately used.”

The Complainant also claims that the unauthorized use and registration of the disputed domain name by the Respondent to attract and redirect Internet users to the Complainant’s website is for the sole purpose of achieving commercial gain and then constitute bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of 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.

Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.

It results from the documents supporting the Complaint, and in particular from Annex 9, that the Complainant is the owner of trademark registrations for SODEXO, notably those detailed in section 4 above.

Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark (…), the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

This test is satisfied here, as the disputed domain name, <sodexo-belgium.com>, identically reproduces the SODEXO trademark, and because the added element, namely “belgium”, consists of a mere geographical term, which does not prevent the Complainant’s trademark to remain recognizable. Indeed, there is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview 3.0, section 1.8; Kabbage, Inc. v. Name Redacted, WIPO Case No. D2020-0140). Besides, the gTLD “.com” may be ignored for the purpose of assessing the confusing similarity, because it only plays a technical function.

Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant contends that it has not given its consent for the Respondent to use its SODEXO trademark in a domain name registration or in any other manner.

Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.

Furthermore, even if the disputed domain name redirects to the Complainant’s own website, it nevertheless remains that the nature of the disputed domain name, insofar as it consists of the intrinsically distinctive and well-known SODEXO trademark plus a geographical term, carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1). Indeed, the disputed domain name tends to be perceived as related with the Complainant’s website dedicated to Belgium.

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden of production now shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Taking all the above into consideration, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.

Registration in bad faith

In the present case, the Panel notes that:

- the use of the SODEXO trademark predates the registration of the disputed domain name by 13 years, “sodexo” is a coined word;
- the Complainant has established the well-known feature of its SODEXO trademark, which has already been recognized by previous UDRP panels (e.g. Sodexo v. Li Li, WIPO Case No. D2021-1018; Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021; and Sodexo v. Lloyd Group, WIPO Case No. D2021-1214);
- the disputed domain name reproduces the Complainant’s trademark in its entirety with the addition of the term “belgium”;
- the disputed domain name redirects to the Complainant’s own website (see WIPO Overview 3.0, section 3.1.4);
- the Respondent is located in France, country which is the domestic market of the Complainant; and none of the Complainant’s arguments has been denied by the Respondent, who has chosen not to participate in this proceedings.

In this Panel’s view, these elements clearly show that the Respondent was necessarily aware of the Complainant’s SODEXO trademark when he registered the disputed domain name.

Use in bad faith

First, the disputed domain name is used to redirect to the Complainant’s website.

Besides, it results from the composition of the disputed domain name insofar as it consists of the intrinsically distinctive and well-known SODEXO trademark plus the geographical term “belgium”, that tends to be perceived as related with the Complainant’s official website for Belgium.

Furthermore, the Panel has found¹ that there are email server records configured with the disputed domain name.

In such a context, this Panel is of the opinion that the Respondent, who has a clear absence of rights on the disputed domain name, is in a position to send emails unduly impersonating the Complainant.

As a consequence, the Respondent is not only retaining control over the redirection of the disputed domain name by redirecting it to the Complainant’s website, but he is using it in a way that represents an unbearable threat hanging over the head of the Complainant.

In addition, the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use, and he has also concealed his identity when registering the disputed domain name. Given the context of this case, these elements constitute further evidence of the Respondent’s bad faith.

In conclusion, for all the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 <sodexo-belgium.com> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: December 19, 2021

¹ It is well accepted that the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, enable a panel to undertake limited factual research into matters of public record if it considers such information useful to assessing the case merits and reaching a decision. (see WIPO Overview 3.0, section 4.8).