WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Contact Privacy Inc., Customer 0162742571 / Luis prada, french smells

Case No. D2021-3747

1. The Parties

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

The Respondent is Contact Privacy Inc., Customer 0162742571 / Luis prada, french smells, France.

2. The Domain Name and Registrar

The disputed domain name <sodexio.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 11, 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 November 16. 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Center received an email communication from the Respondent on November 18, 2021, which translates to “I don’t care.”

The Center sent the Commencement of Panel Appointment Process email on December 9, 2021.

The Center appointed Isabelle Leroux as the sole panelist in this matter on December 30, 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, previously called Sodexho Alliance, is a French Company founded in 1966 and one of the largest companies in the world specialized in foodservices and facilities management.

The Complainant, which employs 420.000 employees and serves 100 million consumers in 67 countries per year, is one of the largest employers worldwide. The consolidated revenues of the Complainant reached EUR 19,3 billion in 2020.

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

- 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;

- 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;

- 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;

- 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;

- 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;

- 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;

- European Union word Trade Mark 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;

- European Union semi-figurative Trade Mark 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 disputed domain name <sodexio.com> was registered on October 5, 2021. The disputed domain name is not active and resolves to a page indicating “This store is unavailable”.

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

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The SODEXO and SODEXHO Trademarks are widely known all over the world, as recognized in numerous UDRP decisions;

The Respondent lacks rights or legitimate interests in the disputed domain name as he has no rights accruing from the use of “sodexio” (as corporate name, trade name, shop sign, mark or domain name) that are prior to the Complainant’s trademark rights;

The Respondent is not affiliated with the Complainant in any way nor has it been licensed by the Complainant to use the SODEXO and SODEXHO Trademarks in the disputed domain name or otherwise;

As “sodexo" and “sodexho” are fanciful terms, nobody could legitimately choose it unless seeking to create an association with the Complainant’s activities and the SODEXO and SODEXHO Trademarks;

Because the SODEXO and SODEXHO Trademarks are well-known, the Respondent should have known of their existence at the time of registering the disputed domain name, which the Respondent cannot legally use;

Numerous UDRP panels have established that a respondent’s knowledge of the Complainant’s mark is strong inference of the Respondent’s bad faith in the context of the Policy;

The Respondent not only had actual knowledge of the SODEXO mark but also wants to benefit from its reputation;

The unauthorized registration of the disputed domain name by the Respondent and its passive holding, are presumably for commercial gain and fraudulent purposes;

As a consequence, the Complainant requests that the disputed domain name be transferred.

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 in this administrative proceeding, the Complainant must prove that:

(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 was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

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 almost identical reproduction of the SODEXO Trademark, to which has been added only the letter “i”, and the generic Top-Level Domain (gTLD) “.com”.

The Panel also notices that the disputed domain name is composed of the almost identical reproduction of the other SODEXHO Trademark, to which the letter “h” has been replaced by the letter “i”, and to which has been added the gTLD “.com”.

The addition of the letter “i” does not avoid a finding of confusing similarity.

Furthermore, the gTLD “.com” does not affect the confusing similaritybetween the disputed domain name and the Complainant’s earlier trademarks.

Consequently, the Panel finds that the disputed domain name to be confusingly similar to the Complainant’s trademarks. The first element of the paragraph 4(a) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a) (ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Hence, after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.

In this case, the Complainant brings forward the following elements:

- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent is not known under the disputed domain name, nor does it have any trademark rights on such name; and
- The Complainant has no relationship whatsoever with the Respondent.

In addition, the Complainant has provided evidence of the fact that the disputed domain name resolves to an inactive website. Therefore, there is no indication of any potential rights of legitimate interests that the Respondent may have in the disputed domain name.

Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not responded to the Complainant’s contentions and therefore not proved otherwise.

Given these circumstances, the Panel finds that the second element of the paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant’s trademarks have been recognized as well-known by previous UDRP panels.

Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s trademarks at the time the disputed domain name was registered and finds that the registration was therefore made in bad faith. See in particular: Sodexo v. Julien Jimenez, WIPO Case No. D2021-1414; Sodexo v. Privacy service provided by Withheld for Privacy ehf / Andrew Dacxd, WIPO Case No. D2021-2474; Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf/ [Name Redacted], WIPO Case No. D2021-2753.

As to the use of the disputed domain name in bad faith, the Panel has evidenced that the disputed domain name resolves to an insecure page with “potential security risks”, according to the browser’s safety warning notice. This use constitutes a passive holding that can clearly be regarded as an indication of bad faith use.

The lack of use of the disputed domain name in a corresponding website, and the Respondent’s failure to reply to the Complainant’s contentions give no basis to the Panel to believe that the disputed domain name might conceivably be put to good faith use.

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.

Consequently, the Panel finds that the disputed domain name was registered and used in bad faith, so that the third and final element of the Policy is met.

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, <sodexio.com>, be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Date: January 13, 2022