Sodexo v Bernard Acosta

WIPO Case No. D2025-2806

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Bernard Acosta

Case No. D2025-2806

1. The Parties

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

The Respondent is Bernard Acosta, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sodexo-store.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2025.
On July 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 18, 2025, 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 (“Domain Admin”) and contact information in the Complaint.
The Center sent an email communication to the Complainant on July 18, 2025, 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 July 22, 2025.

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 July 23, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was August 12, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 18, 2025.

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The Center appointed Estela Mariel de Luca as the sole panelist in this matter on August 20, 2025.
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, Sodexo (formerly Sodexho Alliance), is a French limited company founded in 1966, specialized in the field of food and facilities management services.

The Complainant is the owner, among others, of the following trademark registrations:

-	, International trademark registration No. 964615, registered on January 8, 2008, in
international (int.) classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
-	SODEXO, International trademark registration No. 1240316, registered on October 23, 2014, in int.

classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

- SODEXO, European Union trademark registration No. 008346462, registered on February 1, 2010, in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

- , International trademark registration No. 689106, registered on January, 28, 1998, in int.

classes 16, 36, 37, 39, 41, and 42.

In addition, the Complainant owns numerous domain names containing the denomination “Sodexo”, such as:
<sodexo.com>, <sodexo.fr>, <sodexousa.com>, and <sodexoca.com>.

The disputed domain name was registered on July 16, 2025, and resolved to a website featuring pay-per- click links to third party websites which are competitive to the Complainant’s business.

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.

Notably, the Complainant argues that the disputed domain name wholly incorporates its SODEXO trademark
and that the mere addition of the term “store” does not avoid a finding of confusing similarity with the
SODEXO mark.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, noting that the Respondent is not a licensee of the Complainant, nor has it been otherwise authorized by, or affiliated with, the Complainant in any manner.

According to the Complainant, “Sodexo” is a fanciful name, and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark, with the intention of creating an association with the Complainant’s activities and SODEXO trademark.

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The Complainant also contends that the Respondent is using the disputed domain name <sodexo- store.com> to divert Internet users to a parked page containing links to competitors of the Complainant.

Finally, the Complainant also refers to several prior UDRP decisions where it has prevailed in disputes over domain names incorporating the SODEXO/SODEXHO mark, which has been recognized as “well-known” or “famous”.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights;

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

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

The Respondent’s default in the case at hand does not automatically result in a decision in favor of the
Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a
response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the

Complaint.

Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from the

Respondent’s failure to submit a response as it considers appropriate.

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 Complainant’s mark is wholly incorporated within the disputed domain name. The addition of the word
“store” 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.

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

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.

The Complainant has clearly stated that the Respondent has no connection with them and has not been granted any authorization or license to use the SODEXO trademark or to register domain names containing it. Additionally, there is no indication that the Respondent has any association with the SODEXO mark, nor any evidence suggesting that the Respondent has ever been commonly identified by the disputed domain name. WIPO Overview 3.0, section 2.3.

The Panel finds that, prior to any notice of the dispute, the disputed domain name resolved to a website reproducing the Complainant’s trademark and hosting a pay-per-click parking page with links to websites of the Complainant’s competitors. Panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The evidence demonstrates that the Complainant holds rights to the SODEXO trademark, which predates the Respondent’s registration of the disputed domain name. The mere registration of a domain name that is confusingly similar to a well-known trademark by an unaffiliated party can, in itself, create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

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In addition, the Complainant argues that the disputed domain name was used by the Respondent to attract, for commercial gain, Internet users to competitors’ websites offering catering services.

The Panel concurs with the view of several UDRP panels that the use of a domain name in connection with a website with pay-per-click links to divert Internet traffic and trade on the goodwill attached to a complainant’s trademark, in order to attract Internet users for the respondent’s commercial gain, constitutes evidence of

bad faith. See, for example, Ted Britt Ford Sales, Inc. and Ted Britt Sterling Chevrolet LLC v. Domains By

Proxy, WIPO Case No. D2013-0784.

The Panel finds that the Complainant has established the third element 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-store.com> be transferred to the Complainant.

/Estela Mariel de Luca/
Estela Mariel de Luca
Sole Panelist
Date: September 3, 2025