Sodexo v Domain Privacy, Domain Name Privacy Inc

WIPO Case No. D2025-0005

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Domain Privacy, Domain Name Privacy Inc

Case No. D2025-0005

1. The Parties

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

The Respondent is Domain Privacy, Domain Name Privacy Inc, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <sodexo.online> is registered with Communigal Communications Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2025. On January 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 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 January 14, 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 January 15, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 7, 2025.

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The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on February 14, 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 (previously called SODEXHO ALLIANCE), is a French limited company founded in 1966. The Complainant is one of the largest companies in the world specializing in food services and facility management sectors. The Complainant employs 423,000 employees and serves 80 million consumers on a daily basis in 45 different countries around the world. From 1996 to 2008, the Complainant promoted its activities under the SODEXHO trademark and business name. In 2008, it simplified its trademark and business name to SODEXO.

The record shows that the Complainant has a large portfolio of SODEXO and SODEXHO registered trademarks around the world, including the following European Union (“EU”) trademark registrations, which also cover Cyprus, where the Respondent is located:

- EU Trademark Registration SODEXO No. 008346462, registered on February 1, 2010, for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- EU Trademark Registration SODEXO (figurative trademark) No. 006104657, registered on June 27, 2008, for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.

In addition, several prior UDRP decisions recognized that the Complainant’s trademarks are well-known (including, Sodexo v. Contact Privacy Inc. Customer 1247189803 / NorAm Accounts Receivable, WIPO Case No. D2020-1683 and SODEXO v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No.

D2020-1762).

The Complainant also notes that it owns several domain names containing the SODEXO trademark, including the domain names <sodexo.com> and <sodexo.fr>.

The disputed domain name was registered on January 24, 2024. It appears from the record that at the time of filing the Complaint, it was redirected to a website falsely appearing to be an official Windows website with a security warning message written in French and containing a phone number for Windows customer

support. At the time of drafting this Decision, it resolved to an inactive website.

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 contends that it is widely established in different countries, including Cyprus where the Respondent is located. The Complainant notes that the SODEXO and SODEXHO trademarks have a strong reputation and are widely known all over the world. The Complainant asserts that the disputed domain name incorporates the SODEXO trademark in its entirety. Therefore, the public will believe that the disputed domain name belongs to the Sodexo group or is linked to Sodexo.

The Complainant also submits that it became aware that the Respondent registered the disputed domain name and is redirecting it to a page connected to a malicious site written in French that appears as a Windows official page with a support contact number. Furthermore, the Complainant contends that when they tried to call that phone number, an operator requested them to download software allowing remote

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access to their computer. For this purpose, the operator provides a user code that is, according to the suspects a fraudulent use of the disputed domain name.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name as it has no rights on “Sodexo” as a corporate name, trade name, shop sign, trademark, or domain name that would be prior to the Complainant’s rights. In addition, the Respondent was not commonly known

by the disputed domain name. Finally, the Complainant asserts that the Respondent has no affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted to register the disputed domain name and use it.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith. In this respect, the Complainant, inter alia, submits that the sign “Sodexo” is purely fanciful, and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the

Complainant. Considering the well-known nature and reputation of the SODEXO trademark, the Respondent
knew its existence at the time of registration. Using the disputed domain name to point to a malicious
website or page constitutes evidence of bad faith. This use may not only be confusing and disturbing for the
consumers but can also create a dilution of the SODEXO trademark. Furthermore, bad faith use may also
result from the threat of an abusive use of the disputed domain name. Finally, the Complainant asserts that
the unauthorized registration and use of the disputed domain name to attract and redirect Internet users to a
malicious page are necessarily for harming and/or commercial gain, and this constitutes bad faith registration

and use.

B. Respondent

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

6. Discussion and Findings

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 identical 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.

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

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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. Particularly, the Panel finds that the composition of the disputed domain name, which is identical to the Complainant’s well-known trademark, carries a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.

In addition, panels have held that the use of a domain name for illegitimate activity can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In the present case, the Panel finds that the Complainant provided evidence that the Respondent used the disputed domain name to redirect to a webpage distributing malware.

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.

Based on the available record, 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.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In the present case, the Panel also considers the registration dates of the SODEXO trademark and the disputed domain name, the well-known and distinctive nature of the SODEXO trademark, and the fact that the disputed domain name is identical to the SODEXO trademark. The Panel concludes that the Respondent must have been aware of the Complainant’s well-known SODEXO trademark when registering the disputed domain name. WIPO Overview 3.0, section 3.2.2.

Panels have held that the use of a domain name for illegitimate activity here, claimed distributing malware, constitutes bad faith. WIPO Overview 3.0, section 3.4. In this regard, the Panel is satisfied that the Complainant provided evidence that the disputed domain name was used to redirect Internet users to another website for potential malware distribution.

In the absence of any response from the Respondent rebutting the Complainant’s assertions and considering the above, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

As noted above, the disputed domain name resolved to an inactive website at the time of drafting this the Panel’s determination regarding the Respondent’s bad faith.

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Based on the available record, 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.online> be transferred to the Complainant.

/Mehmet Polat Kalafatoglu/
Mehmet Polat Kalafatoglu
Sole Panelist
Date: February 28, 2025