Sodexo v Jhon Regalado

WIPO Case No. D2024-3003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SODEXO v. Jhon Regalado

Case No. D2024-3003

1. The Parties

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

The Respondent is Jhon Regalado, Peru.

2. The Domain Name and Registrar

The disputed domain name <promocionsodexo.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2024. On

July 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On July 24, 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 (Domains By Proxy, LLC) and contact information in the

Complaint. The Center sent an email communication to the Complainant on July 25, 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 July 30, 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 August 2, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was August 22, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 26, 2024.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on September 6, 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.

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4. Factual Background

The Complainant, SODEXO (before called SODEXHO ALLIANCE) is a French company founded in 1966

that claims to be one of the largest companies in the world specialized in food services and facilities

management, with 430.000 employees worldwide, serving daily 80 million consumers in 45 countries.

For fiscal year 2023, the consolidated revenues of the Complainant reached EUR 22,6 billion which

represent by region: 46% North America, 36 % Europe, and 18 % for the rest of the world.

From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In

2008, the Complainant simplified the spelling of its mark and name to SODEXO under which it provides a

wide range of on-site services.

The SODEXO / SODEXHO mark is continuously and extensively used and registered worldwide. Among

many more, the Complainant is the owner of the following trademark registrations.

International Trademark Registration No. 964615 SODEXO (Design), registered on January 8, 2008, in

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

European Trademark Registration No.008346462 SODEXO, registered on February 1, 2010, in classes 9, 16

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

The Complainant also owns numerous domain names corresponding to and/or containing “sodexo” which it

uses to promote its activities, among others, <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>,

<sodexo.fr>.

The mark SODEXO is used in connection with a large range of activities, including restaurant and catering

services to companies, hospitals, schools, universities and a range of other organizations. In addition to

traditional food services, the Complainant’s expertise includes retail services, food delivery, meal and food

vouchers as well as digital food ordering services. The Complainant’s facility management services combine

reception, hospitality, cleaning services, and infrastructure maintenance services.

The disputed domain name was registered on July 22, 2024, and currently resolves to an inactive webpage,

which shows the word “Forbidden”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it has become aware that the Respondent has registered the disputed domain

name and is using it as a page in Spanish proposing promotions to consumers if they complete a form,

namely with their email address:

The Respondent has no rights nor legitimate interests in the disputed domain name as he has no rights on

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

Complainant’s rights on 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.

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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 the disputed domain name is composed of the trademark SODEXO

associated to the Spanish word “promoción”, which is very close to the English Word “promotion”,

internationally understood.

The expression “promoción sodexo” therefore refers to a Complainant’s official website for promotion of the

Complainant’s services.

The unauthorized registration and use of the disputed domain name by the Respondent to attract Internet

users to a false website looking like an official website of the Complainant, is for the sole purpose of

achieving commercial gain and constitutes bad faith registration and use.

Finally, the Complainant requests the Panel to issue a decision ordering 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

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 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, “promocion” may bear on assessment of the second and third

elements, the Panel finds the addition of such term 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.

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

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

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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 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.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s name and trademark

SODEXO mentioned in section 4 above (Factual Background) when it registered the disputed domain name

on July 22, 2024.

As indicated by previous Panels, the Complainant’s SODEXO trademark enjoys significant reputation

throughout the world, making it rather unlikely for anyone to register a domain name comprising such a

widely known and distinctive word out of mere coincidence. Sodexo v. Huade Wang, WIPO Case

No. D2022-1446.

In accordance with section 3.1.4 of WIPO Overview 3.0, the Panel considers that the inclusion of the

Complainant’s SODEXO trademark in the disputed domain name creates a presumption of bad faith

registration. The addition of the term “promocion” in the disputed domain name tends to strengthen the

confusion between the Complainant’s trademark and the disputed domain name, as it is the Spanish

translation and almost identical to the English word “promotion”, the meaning of which is well known to the

majority of Internet consumers. Clearly, the disputed domain name conveys the idea that it refers to a

Complainant’s official website for promotion of the Complainant’s services, which is false.

The Respondent, when registering the disputed domain name, has targeted the Complainant’s business and

its trademark SODEXO with the intention to confuse Internet users and capitalize on the fame of the

Complainant’s trademark for its own benefit.

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for

the Respondent’s choice of the disputed domain name is also a significant factor to consider that the

disputed domain name was registered in bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed

domain name constitutes bad faith under the Policy and that the requirements of paragraph 4(a)(iii) of the

Policy have been fulfilled.

Whilst the disputed domain name does not currently seem to direct to an active website, Panels have found

that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive

holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the

distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain

name, and finds that in the circumstances of this case the passive holding of the disputed domain name

does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <promocionsodexo.com> be transferred to the Complainant.

/Miguel B. O’Farrell/

Miguel B. O’Farrell

Sole Panelist

Date: September 20, 2024