Sodexo v Jerry Anderson

WIPO Case No. DCO2023-0023

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Jerry Anderson

Case No. DCO2023-0023

1. The Parties

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

Respondent is Jerry Anderson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sodexovoucher.co> (“Domain Name”) is registered with Dynadot, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2023. On March 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on March 10, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 13, 2023.

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 Respondent of the Complaint, and the proceedings commenced on March 16, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2023.

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The Center appointed Marina Perraki as the sole panelist in this matter on April 18, 2023. 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

Founded in 1966, Complainant is specialized in foodservices and facilities management. Listed as one of
“The world’s Most Admired Companies” by FORTUNE Magazine, Complainant has 422,000 employees and
provides services in 53 countries. For fiscal year 2022, the consolidated revenues of Complainant reached

EUR 21.1 billion.

Complainant owns numerous trademark registrations for SODEXO including:

- the International trademark registration No. 964615, SODEXO (figurative), registered on January 8, 2008 with priority from the French trademark registration No. 073513766 of July 16, 2007, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, and

- the International trademark registration No. 1240316, SODEXO (word), registered on October 23,
2014, for goods and services in international classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and
45.

Complainant’s group is also the owner of SODEXO domain names including <sodexo.com> and

<sodexovoucher.com>.

The Domain Name was registered on March 3, 2023 and resolves to a Pay-Per-Click (PPC) page (the

Website) providing sponsored links to third party websites.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

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A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the SODEXO mark.

The Panel finds that the Domain Name is confusingly similar with the SODEXO trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety with the addition of the
word “voucher”. The Panel finds that the trademark is recognizable in the Domain Name (Magnum Piering,
Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, WIPO Overview of WIPO

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

The country code Top-Level Domain (“ccTLD”) “.co” is also disregarded, as ccTLDs typically do not form part
of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements

SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds that the Domain Name is confusingly similar to the SODEXO trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering
of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) has been commonly known by the

Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with
respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain
Name and Respondent has not been commonly known by the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolves to the Website which contains
PPC links to third party websites.

Respondent has not provided a plausible explanation about the inclusion of these links. In the absence of such explanation, it appears not unlikely to the Panel that the inclusion of these links was intended to increase and monetize the traffic to the Domain Name, which would increase the attractiveness and price in the offer for sale (Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).

These circumstances speak against any rights or legitimate interests held by Respondent.

Complainant has established Policy, paragraph 4(a)(ii).

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C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       Respondent has registered the Domain Name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has
engaged in a pattern of such conduct; or

(iii)      Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Complainant’s SODEXO trademark had been used and registered at the time of the Domain Name
registration and enjoyed reputation in its field as repeatedly recognised (Sodexo v. Registration Private,
Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.
D2020-1580). The Panel finds it more likely than not that Respondent had Complainant’s mark in mind
when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No.
09382953107339 dba WhoIs Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case
No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No.

D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable
through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517;

Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

As regards use, the Domain Name resolves to the Website which contains PPC links to third party websites.
Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been
recognized that use of another’s trademark to generate revenue from Internet advertising can constitute
registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353;
Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by

Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).

Lastly, per Complaint, Respondent was involved in another case having ordered the transfer of a domain
name (neuschwanstein3.com Freistaat Bayern v. Registration Private, Domains By Proxy, LLC / Jerry
Anderson, 3x Domains, WIPO Case No. D2015-2122), while the registered email address of Respondent
was involved in this and two other cases which ordered the transfer of domain names
(actelionclinicalresearch.com Actelion Pharmaceuticals, Ltd v. Registration Private, Domains By Proxy, LLC /
3X Domains, WIPO Case No. D2016-2393 and philpmorris.com Philip Morris USA Inc. v. Registration
Private, Domains By Proxy, LLC / 3X Domains, WIPO Case No. D2016-2370).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

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Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <sodexovoucher.co> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: May 2, 2023