Sodexo v My Store Admin, My Store

WIPO Case No. D2024-3831

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. My Store Admin, My Store

Case No. D2024-3831

1. The Parties

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

The Respondent is My Store Admin, My Store, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sodexho-fr.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19,
2024. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. The same day, 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 (Contact Privacy Inc., Customer 0172427343) and contact
information in the Complaint. The Center sent an email communication to the Complainant on September
24, 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

September 26, 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 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 1, 2024.

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The Center appointed Gareth Dickson as the sole panelist in this matter on November 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.

4. Factual Background

The Complainant is a French limited company established in 1966, initially known as Sodexho Alliance before changing its name to Sodexo in 2008. It specialises in food services and facilities management, employing approximately 430,000 individuals and serving 80 million consumers across 45 countries each

day. For the fiscal year 2023, the Complainant reported consolidated revenues of EUR 22.6 billion, with a
presence in, inter alia, North America and Europe.

The Complainant has been operating under the trade mark SODEXHO or, since 2008, SODEXO (the “Mark”). These versions of the Mark are visually similar and aurally identical. Since they are both coined terms, there is no conceptual difference between them either. The Complainant owns a number of trade mark registrations for both versions of the Mark, including:

- Canadian trade mark registration number TMA392568 for SODEXHO (word), registered on January

10, 1992;

- Canadian trade mark registration number TMA654335 for SODEXHO (figurative), registered on

December 5, 2005;

- International trade mark registration number 689106 for SODEXHO (figurative), registered on January

28, 1998;

-	International trade mark registration number 694302 for SODEXHO (figurative), registered on June 22,
1998;
-	International trade mark registration number 964615 for SODEXO (figurative), registered on January

8, 2008;

-	International trade mark registration number 1240316 for SODEXO (word), registered on October 23,
2014;
-	European Union trade mark registration number 006104657 for SODEXO (figurative), registered on

June 27, 2008;

- European Union trade mark registration number 008346462 for SODEXO (word), registered on

February 1, 2010.

The Complainant’s rights in the Mark have been noted in several UDRP decisions, including six decisions since 2021 in which the Complainant was awarded a transfer of a domain name in the format “<sodexho-[two-letter country code].com>”, i.e., the same format as the disputed domain name in these proceedings, such as Sodexo v. Anngs Uyenw, WIPO Case No. D2023-4707 (<sodexho-uk.com>).

The disputed domain name was registered on September 14, 2024. The Respondent is using the disputed domain name to redirect to a website seemingly associated with the Shopify e-commerce platform, but otherwise appears to be passively held since there is no active content. The Complainant asserts its concerns over potential fraudulent uses, such as email scams requesting payment of false invoices on fake Sodexo bank accounts, but there is no direct evidence of illegal or fraudulent use.

The Complainant alleges that the disputed domain name should be transferred to it under the UDRP.

The Respondent did not respond to the Complaint.

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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 identical or confusingly similar to the evidence of authorisation, consent, or any bona fide use by the Respondent. Furthermore, the Complainant alleges that the disputed domain name was registered and is being used in bad faith, given the Respondent’s pattern of conduct and the risk of fraudulent uses.

Mark, despite the addition of the geographical abbreviation “fr”, indicating a connection between the disputed
domain name and the business operations of the owner of the SODEXHO mark in France, which is
insufficient to distinguish the disputed domain name from the Mark. The Complainant submits that the

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 trade mark 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 trade mark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s SODEXHO Mark is reproduced within the disputed domain name, and the
current version, namely SODEXO, is also immediately recognisable in the disputed domain name.
Accordingly, the disputed domain name is, at least, confusingly similar to the Mark for the purposes of the
Policy. WIPO Overview 3.0, section 1.7.

Although the addition of another term, here “fr”, may bear on assessment of the second and third elements, the Panel finds the addition of such term here 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

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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. Indeed, there is no indication that the disputed domain name has any use or purpose other than to attempt to confuse Internet users as to its origin and to mislead them into thinking that any online or email content emanating from the disputed domain name is provided by or connected to the Complainant, contrary to the fact.

Although not necessary for the Panel’s finding on this limb, the Panel notes the Complainant’s concerns about the use of the disputed domain name for illegal activity. Panels of course have held that the use of a domain name for illegal activity, including for email scams requesting payment of false invoices on fake bank accounts, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. However, although the Complainant is right to be concerned about the possibility of such uses of any domain name that incorporates any of its trade marks without its consent, there is no evidence before the Panel in this Complaint to enable it to determine the existence of such activity. (Similar considerations apply in relation to the third limb, so the discussion is not repeated there.)

Nonetheless, and for the reasons set out above, 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have also found that the non-use of a domain name (including a blank or “coming soon” page) 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 strong reputation and well-known character of the Mark, and the clear similarity of the disputed domain name with the Complainant’s name and Mark intended to mislead potential web users into thinking that the disputed domain name belongs to the Complainant and therefore to divert potential web users from the Complainant’s website they are actually trying to visit, 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.

Further, the Panel notes that the Complainant asserts the Respondent has engaged in a pattern of bad faith conduct because the Respondent has registered domain names corresponding to trade marks held by third parties, resulting in a number of UDRP decisions against the Respondent. While the Panel finds that “My

Store Admin” or “My Store”, according to the Complaint, has been listed as respondents in several UDRP proceedings, there is no decision indicating a respondent as “My Store Admin, My Store”, the Respondent in this case. Therefore, the Panel declines to make a conclusion if the Respondent has engaged in a pattern of bad faith conduct.

Nonetheless, and for the reasons set out above, 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 <sodexho-fr.com> be transferred to the Complainant.

/Gareth Dickson/
Gareth Dickson
Sole Panelist
Date: November 20, 2024