Pluxee International v Host Master, Transure Enterprise Ltd

WIPO Case No. DCO2024-0016

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Pluxee International v. Host Master, Transure Enterprise Ltd

Case No. DCO2024-0016

1. The Parties

The Complainant is Pluxee International, France, represented by Areopage, France.

The Respondent is Host Master, Transure Enterprise Ltd, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <pluxeeshop.co> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28,

2024. On February 28, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On March 5, 2024, 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 (REDACTED FOR PRIVACY) and contact

information in the Complaint. The Center sent an email communication to the Complainant on March 5,

2024, 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

March 8, 2024.

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 March 13, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was April 2, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 9, 2024.

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The Center appointed Roger Staub as the sole panelist in this matter on April 22, 2024. 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 simplified Joint Stock company, which is part of the SODEXO Group.

The SODEXO Group specializes in foodservices, facilities management as well as benefit and reward

services. The Complainant submits that its SODEXO Group’s branch specialized in benefit and reward

services, which activities were developed in France back in 1976. According to the Complainant’s website at

the domain name <pluxeegroup.com>, it has more than 500’000 clients in 31 countries and conducts 4.8

million transactions per day. The Complainant submits that is the No. 2 worldwide in employee benefits and

engagement and No. 1 worldwide in public benefits. On October 2, 2023, the Complainant’s company name

was changed from “SODEXO PASS INTERNATIONAL S.A.S.” to “PLUXEE INTERNATIONAL”. This

change of the company name was registered on October 27, 2023.

The Complainant owns various trademark registrations consisting of the term “PLUXEE” covering a number

of jurisdictions worldwide. The Complainant’s portfolio of PLUXEE trademark registrations includes, inter

alia, the following trademark registrations:

- French trademark registration No. 4905284, PLUXEE, registered on March 10, 2023, in Classes 9, 16,

35, 36, 42 and 43; and

- International trademark registration No. 1706936, PLUXEE, registered on November 2, 2022, in

Classes 9, 16, 35, 36, 42 and 43, claiming protection in, including (but not limited to), the following

jurisdictions: Austria, Benelux, Brazil, Germany, Great Britain, India, Mexico and the United States.

The Complainant submits that it owns various domain names containing its trademark PLUXEE, e.g.,

<pluxeegroup.com> and <pluxeeshop.com>.

The disputed domain name was registered on January 25, 2024. According to the Complainant’s

submissions, the disputed domain name used to resolve to a website warning for malicious content. At the

time of the Decision, the disputed domain name resolves to a website where it is listed for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

First, the disputed domain name is identical, or confusingly similar, to the Complainant’s PLUXEE trademark.

The disputed domain name is composed of the Complainant’s PLUXEE trademark associated with the

English word “shop”, which is internationally understood by consumers. In the disputed domain name, the

trademark PLUXEE keeps its individuality and is clearly perceived by consumers as the predominant part.

Second, the Respondent has no rights nor legitimate interests in the disputed domain name, as it has no

rights in PLUXEE as a corporate name, trade name, shop sign, mark or domain name that would have

priority over the Complainant’s rights in PLUXEE. The Respondent was not commonly known by the

disputed domain name prior to the adoption and use by the Complainant of the PLUXEE mark. Moreover,

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.

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Third, the disputed domain name was registered and is being used in bad faith. The sign PLUXEE is purely

fanciful, and nobody could legitimately choose this word or any variation thereof, unless seeking to create an

association with the Complainant’s activities and mark PLUXEE. The risk of confusion or association with

the Complainant’s PLUXEE mark is stronger as the Complainant itself uses the mark PLUXEE associated

with the word “shop” to propose meal vouchers. The Respondent registered the disputed domain name, and

is using it, to point to a page connecting to a malicious site. Furthermore, SODEXO and the Complainant

have recently faced numerous attacks by phishing with domain names incorporating the SODEXO’s or

PLUXEE’s marks. The Complainant therefore strongly fears a fraudulent use of the disputed domain name,

particularly for phishing. The Respondent obviously knew of the existence of the PLUXEE mark when it

registered the disputed domain name. Finally, this is not the first time the Respondent is involved in a

domain name dispute; the Respondent has been involved in 236 cases, and UDRP panels have ordered the

transfer of domain names held by the Respondent.

B. Respondent

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

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, the Complainant must prove each of the

following:

First, the disputed domain name is identical or confusingly similar to a trademark or service mark to which

the Complainant has rights.

Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Third, the disputed domain name has been registered and is being used in bad faith.

Since the Respondent did not submit a reply, the Panel may choose to accept the reasonable contentions of

the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy

that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v.

NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily 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. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here “shop”) may bear on the assessment of the second and third

elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between

the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 a prima facie case 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 (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

Panels have held that the use of a domain name for illegal activity (here, claimed malicious website and

potential phishing) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0,

section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

UDRP panels have held that the use of a domain name for illegal activity (here: potential phishing)

constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that the

Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel notes that the Complainant submits as evidence screenshots of alerts to Internet users that the

domain name connects to a malicious website. The screenshots, however, do not show the corresponding

website that was accessible under the disputed domain name. Although the Complainant did not submit any

further evidence that would directly establish the claimed illegal phishing activity, the other circumstances of

the case lead to the Panel’s conclusion that the disputed domain name is registered and used in bad faith.

The fact that the Respondent registered the disputed domain name just two months after the Complainant

had effected the change of its company name to PLUXEE INTERNATIONAL suggests that the Respondent

was well aware of the Complainant’s existence and marks. This is further supported by the fact that the

Complainant owns a very similar domain name <pluxeeshop.com>, and that the Complainant itself has been

using the highly distinctive mark PLUXEE associated with the term “shop”. In these circumstances, and in

view of the absence of any explanation from the Respondent, it appears likely that the Respondent has

registered the disputed domain name to mislead Internet users seeking the Complainant’s PLUXEE shop.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case,

which the UDRP was designed to stop.

The Panel finds that the Complainant has established the third element of the Policy.

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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, <pluxeeshop.co> be transferred to the Complainant.

/Roger Staub/

Roger Staub

Sole Panelist

Date: May 6, 2024