Sodexo v Name Redacted[1]

WIPO Case No. DCO2022-0083

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Sodexo v. Name Redacted[1]

Case No. DCO2022-0083

[1] The Respondent appears to have used the name of a third party (an employee for Complainant) when registering the disputed domain

1. The Parties

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

The Respondent is Name Redacted.

2. The Domain Name and Registrar

The disputed domain name <sodexó.co> [xn--sodex-4ta.co] 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 September 28, 2022. On September 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on October 6, 2022 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 11, 2022.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the to reinstitute the proceeding. The Center reinstituted the proceeding on October 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2022.

Complaint, and the proceedings commenced on October 18, 2022. In accordance with the Rules, paragraph
5, the due date for Response was November 7, 2022. The Complainant sent a request for suspension of the
proceeding in order to enter settlement discussion on October 24, 2022. The Center sent the Notification of
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 2, 2022. 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 in this proceeding is Sodexo, a French limited company founded in 1966, (formerly known as “Sodexho Alliance”) and one of the largest companies in the world specializing in food services and facilities management, with 412,000 employees serving 100 million consumers daily in 56 countries. SODEXO is one of the world’s largest employers. From 1966 to 2008, the Complainant promoted its business under the SODEXHO trademark and trade name. In 2008, the Complainant simplified the spelling of its trademark and trade name to SODEXO.

The Complainant owns the SODEXO and SODEXHO trademarks, which enjoy thorough protection through many registrations worldwide.

The Complainant is, inter alia, the owner of:

International trademark registration number 964615 for the SODEXO (device) trademark, registered on

January 8, 2008.

European Union trademark registration number 008346462 for the SODEXO trademark registered on

February 1, 2010.

International trademark registration number 689106 for the SODEXHO (device) trademark, registered on

January 28, 1998.

The disputed domain name was registered on September 27, 2022.

The disputed domain name does not resolve to an active website.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the SODEXO trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

The Complainant inter alia claims that the Respondent is in a position to make a possible fraudulent use of the disputed domain name, notably to perpetrate fraud through emails sent to the Complainant’s clients

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requesting payment of false invoices on fake Sodexo bank accounts.

B. Respondent

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

However, it appears from the documentation provided by the Complainant that a third party in the course of this proceeding sent an email to the Complainant, claiming to be unaware of the registration of the disputed domain name, thus implying that this is most likely a case of identity theft.

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the

Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

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

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

A. Identical or Confusingly Similar

The Complainant has established rights in the SODEXO and SODEXHO trademarks.

The disputed domain name is composed of the sign SODEXO with an accent on the letter “o”.

The country code Top Level Domain (“ccTLD”) suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, and the addition of the accent on the letter “o” in the Complainant’s trademark does not prevent a finding of confusing similarity under the first element of the UDRP.

In this sense, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have
rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation
with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use
or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear
to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in
connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be
commonly known by the disputed domain name or by a similar name. The Respondent has not formally
replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain

name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the SODEXO mark when it registered the disputed domain name.

In fact, the Complainant’s SODEXO trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods and services. It has been registered and used for many years and is a renowned trademark worldwide, especially in the food sector. Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s mark and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name. The typosquatting nature of the disputed domain name further supports this inference.

Inference of bad faith can also be found in the failure to respond to the Complainant’s contentions, and the
Respondent’s lack of any rights or legitimate interests in the disputed domain name.

Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is the fact that the Respondent deliberately chose to conceal its identity. In fact, it appears that the Respondent has misused the identity of a third party to register the disputed domain name.

In addition, it appears that the Respondent registered the disputed domain name by inappropriately using the
identity of a third party for the purpose of impersonating an employee of the Complainant, for possible
fraudulent use of the disputed domain name. This is one of the several claims made by the Complainant
and not refuted by the Respondent.

Lastly, in these circumstances, the passive holding of the disputed domain name would not prevent a finding of bad faith. See section 3.3 of WIPO Overview 3.0.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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, <sodexó.co> [xn--sodex-4ta.co], be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: December 16, 2022

name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has
attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the
name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding,
and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco
Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.