SODEXO v Larry Tsai, Ace 1 Media

WIPO Case No. D2024-4413

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SODEXO v. Larry Tsai, Ace 1 Media

Case No. D2024-4413

1. The Parties

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

The Respondent is Larry Tsai, Ace 1 Media, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sodexo-meal-card-454566782.zone> is registered with eNom, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024.
On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On the same day, the Registrar transmitted by email to the
Center its verification response disclosing the registrant and contact information for the disputed domain
name, which differed from the named Respondent (Whois Agent (170264383), Whois Privacy Protection
Service, Inc.) and contact information in the Complaint.

The Center sent an email communication to the Complainant on October 30, 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 October 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 October 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2024.

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The Center appointed Iris Quadrio as the sole panelist in this matter on November 26, 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.

4. Factual Background

The Complainant – operating since 1966 – is one of the largest companies in the world specialized in food services and facilities management and is one of the largest employers worldwide, with more than 420,000 employees serving daily 80 million consumers in 45 countries.

From 1966 to 2008, the Complainant promoted its business under the SODEXHO trademark. Since 2008, the Complainant has simplified the spelling of its trademark to SODEXO. The trademark SODEXO is extensively used by the Complainant in connection with food services, such as restaurant and catering services, and facility management services, including reception, hospitality and cleaning services.

According to the information appearing on Annexes 4 and 5, the Complainant’s consolidated revenues
amounted to EUR 23.8 billion in 2024. Additionally, the Complainant has been recognized as one of Fortune

Magazine’s “World’s Most Admired Companies” in 2024.

The Complainant is the owner of the trademark SODEXO in many jurisdictions, including International
Registration No. 964615 in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, registered on
January 8, 2008; International Registration No. 1240316 in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43,
44, and 45, registered on October 23, 2014; European Union Intellectual Property Office (EUIPO)
Registration No. 008346462 in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, registered on
February 1, 2010; and EUIPO Registration No. 006104657 in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42,
43, 44, and 45, registered on June 27, 2008, among many others.

Likewise, the Complainant claims to own an important domain name portfolio, including, among others, its primary domain name <sodexo.com> registered since October 9, 1998.

Lastly, the disputed domain name was registered on October 21, 2024, and it resolves to a pay-per-click (PPC) website containing links that, more likely than not, redirect Internet users to fraudulent webpages.

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 claims that the disputed domain name is confusingly similar to its trademark
SODEXO on which the Complainant has prior rights.

The Complainant argues that the Respondent has no rights or legitimate interest in respect of the disputed domain names, nor is he related in any way to the Complainant. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SODEXO or apply for registration of the disputed domain name.

More specifically, the Complainant alleged that the Respondent has not used and/or has no demonstrable intention to use the disputed domain name except to create a likelihood of confusion with the Complainant’s trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain name only to intentionally lead Internet users to believe they are accessing the Complainant’s website.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i)        the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

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, the terms “meal” and “card” and the number “454566782”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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 where 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 that 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
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.

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The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark SODEXO nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name.

Also, the Complainant has prior rights in the SODEXO trademark which clearly precede the Respondent’s registration of the disputed domain name.

Even more, it does not seem that the Respondent made nor is making legitimate noncommercial or fair use of the disputed domain name. In this regard, the Complainant demonstrated that the disputed domain name is parked with PPC links that redirect Internet users to other websites. It is, more likely than not, that the

Respondent’s sole intention is to generate confusion among Internet users as to the origin of the website only for the purpose of gaining commercial profit.

Furthermore, the nature of the disputed domain name (including the Complainant’s well-known trademark in addition with terms “meal” and “card”, which are related to the Complainant’s activities) suggests an implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

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.

In such connection, the Complainant has submitted evidence to support that the trademark SODEXO is widely known and was registered and used many years before the Respondent registered the disputed domain name. When registering the disputed domain name, the Respondent has targeted the

Complainant’s trademark SODEXO to generate confusion among Internet users and benefit from the
Complainant’s reputation under paragraph 4(b)(iv) of the Policy.

Therefore, the Panel is satisfied that the Respondent must have been aware of the Complainant and the Complainant’s trademark SODEXO when it registered the disputed domain name. Consequently, and 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 that the disputed domain name was registered on a bad faith basis.

The disputed domain name resolves to a PPC parking page with various links. The Panel finds therefore that the Respondent’s use of the disputed domain name incorporating the Complainant’s distinctive and well-known mark SODEXO is intended to attract and mislead Internet users when searching for the Complainant’s website and to redirect them to the PPC links displayed at the disputed domain name and from which the Respondent most probably derives commercial revenue.

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-meal-card-454566782.zone> be transferred to the
Complainant.

/Iris Quadrio/ Iris Quadrio Sole Panelist Date: December 10, 2024