Sodexo v Dirk Daniel
WIPO Case No. D2024-4306
•23-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Sodexo v. Dirk Daniel
Case No. D2024-4306
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Dirk Daniel, France.
2. The Domain Name and Registrar
The disputed domain name <sodexo-entreprises-sas.com> is registered with Combell NV (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2024. connection with the disputed domain name. The Center sent reminders on October 24, 2024, and October 29, 2024. On October 30, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 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 October 31, 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 November 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2024.
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On November 28, 2024, the Center sent an email communication regarding the language of the proceeding as the Registrar confirmed that French was the language of the registration agreement. On the same day, the Complainant requested that English be the language of the proceeding and the Respondent did not
submit any comments.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 9, 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, SODEXO, is a renowned French corporation specializing in food services and facilities management. Employing 430,000 individuals, it provides daily services to 80 million consumers across 45 countries.
Historically, from 1966 to 2008, the company operated under the SODEXHO mark and trade name. In 2008, it streamlined its branding by simplifying the spelling of its mark and name from SODEXHO to SODEXO, accompanied by a logo update.
The Complainant owns several trademarks around the world namely:
| - | International trademark | No 964615 dated January 2008, duly renewed, covering |
goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 designating inter alia
Australia, Belarus, Switzerland, China, Algeria, Egypt, European Community, Islamic republic of Iran,
Iceland, Israel, Japan, Republic of Korea, Morocco, Monaco, Norway, Serbia, Russian Federation,
Singapore, Turkey, Ukraine and the United States of America
| - | International trademark SODEXO No. 1240316 dated October 23, 2014, duly renewed, covering |
services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 designating Iran, Mozambique and the
United Kingdom.
| - | European Trademark SODEXO” No. 008346462, dated June 8, 2009, duly renewed and covering |
services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
| - | European Trademark | No. 006104657, dated July 16, 2007, duly renewed and |
| - |
covering services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
goods and services in classes 16, 36, 37, 39, 41 and 42, and designating inter alia Austria, Benelux, International Trademark No. 689106, dated January 28, 1998, duly renewed, covering
Switzerland, China, Germany, Denmark, Algeria, Egypt, Spain, Finland, United Kingdom, Greece, Hungary,
Iceland, Italy, Japan, Monaco, Norway, Poland, Portugal, Romania, Serbia, Russian Federation, Sweden,
Ukraine and Vietnam.
| - | International Trademark | No. 694302 dated June 22, 1998, duly renewed and covering |
goods in classes 9, and designating inter alia Austria, Benelux, Switzerland, China, Germany, Denmark,
Algeria, Egypt, Spain, Finland, United Kingdom, Greece, Hungary, Iceland, Italy, Japan, Monaco, Norway,
Poland, Portugal, Romania, Serbia, Russian Federation, Sweden, Ukraine and Viet Nam.
Furthermore, the Complainant is the owner of several domain name, namely:
| • | <sodexo.com> |
| • | <uk.sodexo.com> |
| • | <sodexoprestige.co.uk> |
| • | <sodexo.fr > |
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| • | <sodexoca.com> |
| • | <sodexousa.com> |
| • | <cn.sodexo.com> |
| • | <sodexho.fr> |
| • | <sodexho.com> |
The disputed domain name is <sodexo-entreprises-sas.com> registered on September 10, 2024, and is currently inactive as it directs to a page provided by the Registrar Combell.
Since the Respondent did not participate in the proceeding, nothing is known other than the Registrar- disclosed details identified.
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 asserts that the disputed domain name is confusingly similar to its trademarks, as it incorporates the distinctive term “Sodexo” from the Complainant's registered trademarks. This is coupled with the French word “entreprises” (i.e. “enterprises” or “companies”) in English) and the abbreviation
“sas”,“which stands for “société par actions simplifiée” (i.e. “simplified joint stock company” in English),
misleading consumers into believing that they are accessing SODEXO's official website.
Furthermore, the Complainant alleges that the Respondent is neither a licensee nor has been authorized to use the Complainant’s trademarks. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, which have has employed in association with an email phishing scheme.
The Complainant maintains that the sign “SODEXO” is entirely distinct, and it is implausible that any party would select this term or any derivative thereof without intending to cause confusion. It is alleged that the Respondent was undoubtedly aware of the Complainant and its trademarks, indicating not only knowledge of
the SODEXO trademark but also an intention to exploit its reputation to perpetrate email scams. Thus, the
Respondent's registration and use of the disputed domain name are deemed to be in bad faith.
Finally, the Complainant believes that the Respondent is the same individual who registered the domain names <sodexogroupe.fr>, <sodexo-groupe.fr>, <sodexogroupes.fr>, and <sodexo-sas.fr>, which were transferred to SODEXO following SYRELI decisions (nos. FR-2023-03722, FR-2024-03770, FR-2024- 03780, and 2024-03787, respectively). Additionally, the domain names <sodexo-group.store>,
<sodexo-entreprises.store>, and <sodexoentreprises.com> were transferred to SODEXO following WIPO respectively).
UDRP decisions (Sodexo v. Dany Karsten, Dany Karsten, WIPO case No. D2024-0610; Sodexo v. Thomas
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules directs the Panel as to the principles that the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in
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accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
The Policy provides, at paragraph 4(a), that each of three elements must be made in order for a complaint to prevail:
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.
A. Language of the proceeding
The language of the proceeding should be the language of the Registration Agreement, but the Panel has the discretion to choose a different language based on the circumstances e.g., the nationality of the Parties, the language of the Complaint and/or Response. See Section 4.5 of the WIPO Overview 3.0.
In this case, the Complainant requested English to be the language of the proceeding as it had submitted all documents in English and the translation into French would have unduly delayed the proceeding and would have incurred new expenses. In addition, the Respondent should be comfortable in communicating in
English as the evidence indicate that he was sending fraudulent emails in English.
Noting that the Respondent did not object to proceed in English, this Panel will render its decision in English in accordance with paragraph 11(a) of the Rules.
B. 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, “entreprises” (meaning “companies” in French) and “sas” (a form of company in France) may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.
Finally, the extension “.com” is not to be taken into consideration when examining the identity or similarity
between the Complainant’s trademarks and the disputed domain names (Accor v. Noldc Inc, WIPO Case No.
D2005-0016).
The Panel finds the first element of the Policy has been established.
C. 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
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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.
Indeed, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it does not own any rights to the SODEXO trademarks, and the Complainant has never authorized or permitted the Respondent to use the SODEXO trademarks or use it to register any domain name consisting of the SODEXO trademark.
The disputed domain name is not used, as it simply leads to the page of the Registrar Combell. Therefore, there is no evidence of any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor of any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Additionally, the Complainant claims that the Respondent is engaged in a phishing scheme, a practice intended to defraud consumers into revealing personal and financial information. The Complainant claims that the Respondent is the same as previous UDRP cases mentioned above. While the Panel notes that the Respondent might be the same (as they share the same mailing address) there is no evidence in the case file of fraudulent emails in relation to the disputed domain name.
Finally, the Respondent had the opportunity to provide its arguments in support of its rights or legitimate interests in the disputed domain name. However, by failing to file a formal response, the Respondent has missed this opportunity and the Panel is entitled to draw such inferences from the Respondent’s failure as it considers appropriate in accordance with paragraph 14 of the Rules.
The Panel finds the second element of the Policy has been established.
D. 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.
In the present case, the Panel notes that the Respondent was likely aware of the Complainant’s trademark rights at the time of registration. Indeed, the Respondent might have been the registrant of many domain names using the sign SODEXO. Such awareness is indicative of bad faith registration as per established UDRP precedents.
Panel finds that, in light of the reputation of the Complainant’s SODEXO trademark and its reproduction in its entirety in the disputed domain name, the Respondent could not have been unaware of the Complainant’s trademark (Sidley Austin LLP v. Redacted for privacy, Whois Privacy Protection Foundation / Peter Wilson, WIPO Case No. D2021-0534)
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While the use of the disputed domain name for phishing activity is not clear in this case, the Panel finds that it resolves to a parking page and the passive holding of a domain name may support a finding of bad faith.
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-entreprises-sas.com> be transferred to the Complainant.
/Nathalie Dreyfus/
Nathalie Dreyfus
Sole Panelist
Date: December 23, 2024
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