WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Larry Johnson, Arvato Global Group

Case No. D2019-1773

1. The Parties

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

The Respondent is Larry Johnson, Arvato Global Group, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <sodexo-global.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 July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2019, the Registrar 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 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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2019.

The Center appointed Andrea Mondini as the sole panelist in this matter on August 30, 2019. 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 one of the largest companies in the world specializing in foodservices and facility management with 460,000 employees in 72 countries.

The Complainant is the owner of numerous trademark registrations for the mark SODEXO, including the International trademark registration No. 964615 SODEXO (figurative) registered on January 8, 2008 in numerous classes.

The disputed domain name was registered on April 10, 2019 and resolves to a parking website.

5. Parties’ Contentions

A. Complainant

The Complainant in essence contends the following:

The mark SODEXO has a strong reputation and is widely known all over the world, including the United States where the Respondent is located. The disputed domain name incorporates the SODEXO trademark in its entirety. The addition of the generic term “global” does not dispel confusion. Therefore, the disputed domain name <sodexo-global.com> is confusingly similar to the trademark SODEXO.

The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the SODEXO trademark. The Respondent therefore has no rights or legitimate interests in the disputed domain name, or any rights in the SODEXO trademarks, or association with the Complainant whatsoever.

The disputed domain name has been registered in bad faith because, given the worldwide notoriety, distinctiveness and reputation of the trademark SODEXO, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark.

The Respondent used the disputed domain name in bad faith as a false email address usurping the identity of two high-ranked Complainants’ officers in order to send on April 10, 2019 fraudulent emails to a financial controller of the Complainant requesting payment of a false invoice.

The Respondent also used the disputed domain name for pointing to parking pages diverting Internet users to websites unrelated to the Complainant but also offering services directly competing with the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

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

(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

The Complainant has shown that it holds registrations for the trademark SODEXO.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates in its entirety the trademark SODEXO. The addition of the dictionary word “global” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends, credibly, that it has not authorized the Respondent to register or use the Complainant’s trademark SODEXO in the disputed domain name, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has demonstrated that the SODEXO mark is distinctive and well-known internationally. The Panel thus infers that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith (see WIPO Case No. D2013-1308, Sodexo v. Shahzan / PrivacyProtect.org).

The Complainant has submitted credible evidence that the Respondent used the disputed domain name to create a false email address usurping the identity of two high-ranked Complainants’ officers to send on April 10, 2019 fraudulent emails to a financial controller of the Complainant requesting payment of a false invoice. In the absence of any Response, the Panel concludes that by so doing the Respondent has used the disputed domain name in bad faith.

The Panel therefore finds that the Complainant has satisfied the requirement under 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-global.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: September 6, 2019