Sodexo v Ignatov Dmitriy Mikhaylovich

WIPO Case No. D2022-1429

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Ignatov Dmitriy Mikhaylovich

Case No. D2022-1429

1. The Parties

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

The Respondent is Ignatov Dmitriy Mikhaylovich, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <sodexo.space> is registered with Beget LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April

21, 2022. On April 21, 2022, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On April 22, 2022, 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 April 28, 2022, 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 May 2, 2022.

The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is

Russian. On April 28, 2022, the Center sent an email communication to the Parties in both English and

Russian regarding the language of the proceeding. The Complainant confirmed its request that English be

the language of the proceeding on April 29, 2022. The Respondent did not comment on the language of the

proceeding.

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 May 10, 2022. In accordance with the Rules, paragraph 5,

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the due date for Response was May 30, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on June 1, 2022.

The Center appointed Clark W. Lackert as the sole panelist in this matter on June 10, 2022. 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’s predecessor in interest, Sodexho Alliance, was founded in 1966 in France, and used the

trade name and mark SODEXHO until it changed its trade name and mark to SODEXO in 2008. It is

currently one of the largest companies in the world and specializes in food services and facilities

management, with 412,000 employees serving 100 million consumers in 56 countries. For fiscal year 2021,

consolidated global revenues reached EUR 17.4 billion. The Complainant is listed as one of “The World’s

Most Admired Companies” by FORTUNE Magazine. The Complainant currently provides a wide range of

services under its trade name and mark SODEXO through an offer of on-site services, benefit and reward

services, as well as personal and home services.

The Complainant owns numerous domain names corresponding to and/or containing the SODEXO mark

including <sodexo.com> (registered October 9, 1998), <us.sodexo.com>, <sodexousa.com>,

<uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, and <cn.sodexo.com>. The

SODEXO mark is continuously and extensively used by the Complainant in 56 countries.

In addition to using its mark SODEXO internationally, the Complainant owns a number of trademark

registrations including:

- International trademark registration No. 964615 for SODEXO (fig.), registered on January 8, 2008

designating the following countries: Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain,

Belarus, Switzerland, China, Algeria, Egypt, European Union, Iran, Iceland, Israel, Japan, Kyrgyzstan,

Democratic People’s Republic of Korea, Republic of Korea, Kazakhstan, Lesotho, Morocco, Monaco,

Moldova, Montenegro, Mongolia, Namibia, Norway, Serbia, Russian Federation, Singapore, Türkiye,

Ukraine, United States of America, Uzbekistan and Viet Nam;

- International trademark registration No. 1240316 for SODEXO, registered on October 23, 2014 designating

the following countries: Iran, Mozambique, and United Kingdom;

- European Union Trade Mark No. 008346462 for SODEXO, registered on February 1, 2010, renewed in

2019;

- European Union Trade Mark No. 006104657 for SODEXO (fig.), registered on June 27, 2008, renewed in

2017;

The company SODEXO services its Russian customers by using the website

“ which is in the Russian language.

The Complainant is a well-known mark as confirmed by a number of UDRP panel decisions, including:

Sodexo v. Contact Privacy Inc. Customer 1246780534 / Chivers Michael, WIPO Case No. D2020-0865;

Sodexo v. WhoisGuard Protected, WhoisGuard, Inc. / New World, WIPO Case No. DCO2020-0021; Sodexo

v. Contact Privacy Inc. Customer 1247228940 / James Lehman, WIPO Case No. D2020-1281; SODEXO v.

李金梁 (Li Jin Liang), WIPO Case No. D2020-3064; Sodexo v. Domains By Proxy, LLC,

DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3085;

and a number of others.

The disputed domain name was registered on April 3, 2022, and resolves to a pay-per-click parking website.

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5. Parties’ Contentions

A. Complainant

The disputed domain name incorporates the SODEXO mark in its entirety with the addition of the Top-Level

Domain (“TLD”) “.space”. The addition of the TLD “.space” does not have any impact on the overall

impression of the dominant portion of the disputed domain name. Due to the identification of the disputed

domain name with the SODEXO mark, the public will believe that this domain name comes from SODEXO

group or is linked to the Complainant in some manner. The Complainant has become aware that the

Respondent has registered the disputed domain name and is using it as parking page.

The Respondent has no rights or legitimate interests in the disputed domain name and has no rights in

SODEXO as corporate name, trade name, shop sign, mark, or domain name that would be prior to the

Complainant’s rights in SODEXO. The Respondent was not commonly known by the disputed domain name

prior to the adoption and use by the Complainant of the corporate name, business name, and mark

SODEXO / SODEXHO. 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.

The disputed domain name was registered and is being used in bad faith. The mark SODEXO is purely

fanciful and as a coined mark nobody can legitimately choose this word or any variation thereof, unless they

seek to create an association with the Complainant’s activities and mark SODEXO. Due to the well-known

character and reputation of the SODEXO mark, the Respondent knew of its existence when he registered

the identical disputed domain name. Previous UDRP decisions recognize that actual knowledge of the

Complainant’s trademarks and activities at the time of the registration of the disputed domain name may be

considered an inference of bad faith: “It has been held in previous cases that knowledge of a corresponding

mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,

WIPO Case No. D2010-0494; Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO

Case No. D2006-0464)” Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; “There is

a ‘principle established in previous UDRP decisions that the registration of a domain name incorporating a

widely-recognized or well-known trademark by someone who has no connection whatsoever with the

trademark is a clear indication of bad faith’ Sodexo v. Shahzan - PrivacyProtect.org, WIPO Case No. D2013-

1308; “In the absence of contrary evidence, the Panel finds that Respondents knew of or should have

known of the Complainant’s trademark and services at the time Respondents registered the Domain Names

given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark (Expedia, Inc. v. European

Travel Network, WIPO Case No. D2000-0137)” Parfums Christian Dior v. Javier Garcia Quintas and

Christiandior.net, WIPO Case No. D2000-0226.

The Respondent not only knew of the SODEXO mark but wanted to benefit off its reputation. It is obvious

that the Respondent registered the disputed domain name with actual knowledge of the Complainant's rights

in the SODEXO mark, very likely for the purpose of creating confusion with the Complainant’s mark to divert

or mislead third parties for the Respondent’s illegitimate profit. This is then an intentional attempt to attract,

for commercial gain, Internet users to unrelated websites by creating a likelihood of confusion with the

well-known mark SODEXO. Regarding use of a domain name in connection with pay-per-click parking

websites, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

Overview 3.0”), section 2.9 states: “Applying UDRP paragraph 4(c), panels have found that the use of a

domain name to host a parked page comprising PPC 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”.

B. Respondent

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

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6. Discussion and Findings

The Panel has reviewed the Complaint, all supporting evidence, and the proceeding history as set forth in

the record. The Panel notes that no response has been filed in this proceeding and that the record supports

a decision in the Complainant’s favor.

6.1. Procedural Issue – Language of the Proceedings

The Panel supports the finding of the Center that in view of all the facts, this case should follow the language

procedures provided by the Center.

According to the information provided by the Registrar, the language of the registration agreement for the

disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the

Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding

shall be the language of the registration agreement, subject to the authority of the Panel to determine

otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in English, and requests the proceeding to be held in English, the

Center has sent all its email communications to the Respondent in both English and Russian, and has

invited the Respondent to express its views on the language of the proceeding. The Respondent has not

responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be

held in English.

In the totality of the circumstances, the Panel finds it fair and procedurally efficient for English to be the

language of the proceeding.

A. Identical or Confusingly Similar

The record confirms that the Complainant owns trademark rights in SODEXO as alleged.

The disputed domain name contains an exact copy of the Complainant’s registered and used mark

SODEXO, with the “.space” generic Top-Level Domain (“gTLD”). Use of a gTLD is a “standard registration

requirement” and should be typically be disregarded as an element in determining confusing similarity

because it is a technical component. See WIPO Overview 3.0, section 1.11.1. Moreover, the

Complainant’s mark is incorporated in its entirety in the disputed domain name. See WIPO Overview 3.0,

section 1.7: “While each case is judged on its own merits, in cases where a domain name incorporates the

entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the

domain name, the domain name will normally be considered confusingly similar to that mark for purposes of

UDRP standing”.

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The prima facie case presented by the Complainant shifts the burden of production to the Respondent, and

the Respondent has not presented any arguments or evidence in its favor.

The Respondent has not submitted a reply to the Complaint, and there is no evidence to refute the

Complainant’s allegations concerning this UDRP element.

Moreover, the nature of the disputed domain name, being identical to the Complainant’s SODEXO mark,

carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

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C. Registered and Used in Bad Faith

The record shows that the Complainant’s SODEXO mark and earlier SODEXHO mark have been extensively

registered in multiple jurisdictions around the world, significantly earlier than the registration date of the

disputed domain name, i.e., April 3, 2022. There is also significant evidence that the Complainant’s mark is

widely recognized, and a number of UDRP panels have found that the mark is “well-known”. Noting the

above, and the identical nature of the disputed domain name, it is clear that the Respondent knew of the

Complainant’s SODEXO mark and registered the disputed domain name in order to take unfair advantage of

that mark.

UDRP 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. See WIPO Overview 3.0, section 3.1.4. Furthermore, the disputed domain name

resolves to a parking page with pay-per-click links, which in the circumstances of this case suggests the

Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by

creating a likelihood of confusion with the Complainant’s SODEXO mark.

The Panel finds that the requirements paragraph 4(a)(iii) of the Policy have been satisfied.

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.space> be transferred to the Complainant.

/Clark W. Lackert/

Clark W. Lackert

Sole Panelist

Date: June 14, 2022