Sodexo v Karen Belle, Sodexo

WIPO Case No. DCO2023-0057

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Karen Belle, Sodexo

Case No. DCO2023-0057

1. The Parties

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

The Respondent is Karen Belle, Sodexo, United States of America (“Unites States”).

2. The Domain Name and Registrar

The disputed domain name <sodexojobs.co> (the “Disputed Domain Name”) is registered with

Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2023.

On June 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 3, 2023, 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 (c/o whoisproxy.com) and contact information in the Complaint.
The Center sent an email communication to the Complainant on July 3, 2023 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 4, 2023.

The Center verified that the Complaint 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 the due date for Response was July 27, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 7, 2023.

The Center appointed Michael D. Cover as the sole panelist in this matter on August 14, 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.

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4. Factual Background

The Complainant was founded in 1966 and was previously called Sodexho Alliance and is one of the largest companies in the world specializing in food services and facilities management, with 422,000 employees, operating in 53 countries.

Consolidated revenues for the fiscal year 2022 for the Complainant reached EUR 21.1 billion, with 44% attributable to North America, 38% to Europe and 18% to the rest of the world. The Complainant promoted its business from 1966 to 2008 under its trade name and trademark SODEXHO and thereafter SODEXO, which is used in connection with on-site services, such as restaurant and catering services, benefits and rewards services, comprising, amongst other things, employee benefits to attract, engage and retain employees, incentives and recognition programmes and programmes to manage the distribution of aid and public subsidies, and personal and home services, including childcare.

The Complainant also owns numerous domain names corresponding to and/or containing SODEXO or SODEXHO and promotes its business under various of these domain names, including <sodexo.com>. The Complainant operates a website with job advertisements under the domain name <sodexojobs.co.uk>.

The SODEXHO and SODEXO trademarks are used and registered throughout the world and these
registered trademarks include the International Trademark Registrations No. 964615 SODEXO (and star
device) registered January 8, 2008 and protected in various countries, including the United States, and No.
1240316 SODEXO registered October 23, 2014, protected in, amongst other countries, the United Kingdom.

The Complainant is well-established in the United States, the location of the Respondent.

The Disputes Domain Name was registered on June 2, 2023 and is inactive.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the marks
SODEXHO and SODEXO in which the Complainant has rights.

The Complainant goes on to submit that its SODEXHO/SODEXO trademark has a strong reputation and is widely known all over the world and that the previous Panels have recognized the well-known character of the SODEXHO/SODEXO trademark and cites various decisions in support. These include Sodexho v. Host

Master, Transure Enterprise Ltd, WIPO Case No. D2022-1140, where the Panel stated that:

“In the light of the well-known character of the Trademarks, the Panel agrees with the Complainant that it is

not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s

activities and its Trademarks under which the Complainant is doing business.”

The Complainant notes that the Disputed Domain Name incorporates the SODEXO mark in its entirety, with

the addition of the element “jobs”. The Complainant submits that the addition of the word “jobs” to the
Disputed Domain Name is inoperative to distinguish it from the Complainant’s trademarks, as, in the

Disputed Domain Name, the SODEXO mark is dominant and keeps its individuality and attractive character. The Complainant also submits that, given the identical reproduction of the SODEXO mark, the public will obviously believe that the Disputed Domain Name constitutes and official SODEXO website offering job ads, noting that the Complainant is operating a website with job ads under the domain name <sodexojobs.co.uk>.

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Rights or Legitimate Interests

The Complainant states that the Respondent has no rights or legitimate interests in respect of the Disputed

Domain Name.

The Complainant notes that the Disputed Domain Name is registered in the name of Karen Belle from

“Sodexo” and submits that the Respondent registered the Disputed Domain Name under the name “Karen

Belle” from “Sodexo”, obviously for the purpose of impersonating an employee allegedly named Karen Bell

from Sodexo, which identity is invented. The Complainant states that the Complainant did not register the subsequent use.

The Complainant continues that the Respondent has no rights or legitimate interests in the Disputed Domain

Name, as the Respondent 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 in SODEXO. The Complainant also submits

that 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 SODEXHO/SODEXO. The
Complainant concludes that 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.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith.

The Complainant notes that the Policy, paragraph 4(b) sets forth a non-exhaustive list of circumstances indicating bad faith and sets these out in the Complaint. The Complainant continues 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’s activities and trademark SODEXO. The Complainant submits

that, given the well-known character and reputation of the SODEXO/SODEXHO trademark, the Respondent
must have known known of its existence when the Respondent registered the Disputed Domain Name, so
that the Respondent perfectly knew that the Respondent had no rights or legitimate interests in the Disputed

Domain Name.

The Complainant submits that previous panel decisions already recognize that actual knowledge of the

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

considered an inference of bad faith. The Respondent not only knows the SODEXO mark but wants to

benefit of the Complainant’s reputation.

The Complainant continues that the Disputed Domain Name does not presently seem to have any active content but that the passive holding of a domain name does not prevent a finding of bad faith and cites in support Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which the panel found that passive holding can indeed constitute a bad faith use under the Policy. The Complainant notes that previous panels have taken into consideration the strong reputation and well-known character of

the complainant’s mark; the lack of evidence provided by the respondent of any good faith use with regard

to the disputed domain name; and the identity of the disputed domain name and mark intended to divert or

mislead potential web users from the complainant’s website they are actually trying to visit.

The Complainant concludes that bad faith may also result from the threat of an abusive use of the Disputed of the Disputed Domain Name, likely in the aim of fraudulent use.

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Remedies requested by the Complainant

The Complainant requests the Panel appointed in this administrative proceedings to decide 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

The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights of legitimate interests in the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established registered rights in its trademark SODEXO.

The Complainant has also established that the Disputed Domain Name is confusingly similar to its SODEXO

trademark, in which it has rights. The Disputed Domain Name contains the Complainant’s trademark

SODEXO in its entirety. It is well established that the addition of the term “jobs” does not prevent a finding of

confusing similarity. It is also well established that the addition of the country-code Top-Level Domain

(“ccTLD”), such as “.co”, as in this case, is to be disregarded in determine confusing similarity, as this is a

technical requirement of registration of a domain name.

The Panel therefore decides that the Disputed Domain Name is confusingly similar to the trademark paragraph 4(a)(i) have been satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the provisions of paragraph 4(a)(ii) of the Policy have been met.

The Panel accepts that the Respondent has not been authorized, licensed or otherwise permitted by the

Complainant to register or use the Complainant’s SODEXO trademark as part of the Dispute Domain Name

or otherwise.

The Complainant has established a prime facie case, to which no response has been filed, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Respondent has not, before any notice to the Respondent of the dispute, made use or demonstrable preparations to use the Disputed Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services not has the Respondent been commonly-known by the Disputed Domain Name nor has the Respondent made legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel therefore decides that the Respondent has no rights or legitimate interests in the Disputed
Domain Name.

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C. Registered and Used in Bad Faith

The Panel finds and decides that the Disputed Domain Name has been registered and used in bad faith. It is a reasonable inference that the Respondent knew of the Complainant and its well-known trademark SODEXO at the time when the Respondent registered the Disputed Domain Name, which was only recently and well after the Complainant registered its SODEXO trademark. The Panel decides that the Respondent had no reason to register the Disputed Domain Name, other than for the SODEXO trademark, which is entirely reproduced in the Disputed Domain Name.

With regard to use of the Disputed Domain Name, it is well established that passive holding of a domain name can constitute bad faith use and the Panel so finds this. In addition, the Respondent has not filed any Response to the Complaint and, in particular, and has failed to file any evidence of good faith use and has tried to impersonate an employee of the Complainant with an invented identity.

The Panel accordingly finds that the Respondent has registered and used the Disputed Domain Name in bad faith and that provisions of the Policy, paragraph 4(a)(iii) have been met.

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, <sodexojobs.co>, be transferred to the Complainant.

/Michael D. Cover/

Michael D. Cover

Sole Panelist
Date: August 28, 2023