Sodexo v Manana Sibusiso

WIPO Case No. D2024-4715

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Manana Sibusiso

Case No. D2024-4715

1. The Parties

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

The Respondent is Manana Sibusiso, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <sodexos.info> is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2024. On November 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 (WhoisSecure) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 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 November 20, 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 November 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 17, 2024.

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The Center appointed Tommaso La Scala as the sole panelist in this matter on December 24, 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 is a well-known French company, worldwide renown for food services and facilities management, which owns - among others - the following trademark registrations for SODEXO:

- International trademark registration No. 964615 SODEXO dated January 8, 2008, in classes 9, 16, 35, 36,

37, 38, 39, 40, 41, 42, 43, 44, and 45, covering various jurisdictions;

- International trademark registration No. 1240316 SODEXO dated October 23, 2014, in classes 9, 16, 35,

36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, covering various jurisdictions;

- European Union trademark registration SODEXO dated June 27, 2008 and registered under No.

006104657, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- Costa Rican trademarks nos. 176620 in class 9, 176233 in class 16, 176116 in class 35, 176232 in class
36, 176117 in class 37, 177073 in class 38, 177072 in class 39, 177071 in class 40, 180012 in class 41,
177070 in class 42, 176621 in class 43, 179048 in class 44 and 176622 in class 45, all for SODEXO (device)
and filed on November 22, 2007.

The disputed domain name is <sodexos.info>, was registered on November 13, 2024, and it currently redirects to the Complainant’s official website (without Complainant’s authorization).

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 contends that the disputed domain name is confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

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.

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Based on the available record, the Panel finds 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 Panel finds the mark is recognizable 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.

As a matter of fact, the addition of letter “s” at the end of the SODEXO word 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 1.9. Such slight amendment looks like a typosquatting practice intended to create confusing similarity between the Complainant’s mark and the disputed domain name.

Based on the available record, 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
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, particularly by asserting that the Respondent is not affiliated with it in any way and that it has never authorized the Respondent to use its trademark as part of 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 Complainant further contends that the Respondent does not make any bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. In addition, the disputed domain name redirects to the Complainant’s official website and this circumstance led the Panel to believe there might be a phishing purpose behind its registration.

Panels have held that the use of a domain name for illegal or illegitimate activity - here
impersonation/passing off - can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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.

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In the present case, the Panel mainly notes that the Complainant claims the Respondent has registered the
disputed domain name and uses the same in bad faith, as the latter currently redirects toward the
Complainant’s official website without the latter’s authorization: such conduct cannot indeed amount to a use
of the disputed domain name in good faith, since it is very likely “such redirection will allow the Respondent
to divert future users to competing web sites after having built up mistaken confidence in the source of the
content is a reasonable one” (see Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case
No. D2002-0109).

It is also a consensus view among UDRP panels that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the respondent’s concealment of its identity. UDRP panels may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding the registration.

The Complainant has substantiated the fact that the SODEXO trademark is widely renown at an international level and benefits from a high level of public awareness (circumstance confirmed by several earlier UDRP decisions).

The identity of the Respondent was disclosed by the Registrar, and it was confirmed that the Respondent was based in Costa Rica, a country where the Complainant has demonstrated to have both legitimate earlier trademark rights and an active business activity. The Respondent did not provide any Response to the Complaint.

The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain name, and clearly did have the Complainant’s trademark in mind when he registered the disputed domain name.

Panels have found that a respondent redirecting a domain name to a complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. WIPO Overview 3.0 at section 3.1.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.

The Panel finds the third element of the Policy has been established.

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 <sodexos.info> be transferred to the Complainant.

/Tommaso La Scala/
Tommaso La Scala
Sole Panelist
Date: January 6, 2025