Sodexo v Privacy Service Provided by Withheld for Privacy ehf /

WIPO Case No. D2022-0747

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Privacy Service Provided by Withheld for Privacy ehf /
Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2022-0747

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues of

Fundación Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <sodexoservicos.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2022. connection with the disputed domain name.

On March 3, 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
March 4, 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

March 9, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the paragraph 5, the due date for Response was March 31, 2022. The Respondent did not submit any

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response. Accordingly, the Center notified the Respondent’s default on April 1, 2022.

The Center appointed Erica Aoki as the sole panelist in this matter on April 8, 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.

The language for the present administrative proceeding is English.

4. Factual Background

The Complainant is a French company founded in 1966 and is one of the largest companies in the world specialized in foodservices and facilities management, with 420 000 employees serving 100 million consumers in 64 countries.

The Complainant is listed as one of “The world’s Most Admired Companies” by FORTUNE Magazine. 1

From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In countries.
2008, the Complainant simplified the spelling of its mark and name to SODEXO and owns several domain
names corresponding to and/or containing the word “Sodexo” or “Sodexho”. Among others, the Complainant
owns the domain names: <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>,
<sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, and <sodexho.com>. The

The disputed domain name <sodexoservicos.com> was registered on February 1, 2022, and is used as a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant provides a wide range of services under its trade name and mark SODEXO (prior services.

The Complainant is widely established and among other countries in Panama where the Respondent is located: “

The Complainant’s has trademark registrations in Panama as following: No. 167186-01 in International
class 9, No. 167188-01 in International class 16, No. 167190-01 in International class 35, No. 167191-01 in
International class 36, No. 167193-01 in International class 37, No. 167194-01 in International class 38,
No. 167195-01 in International class 39, No. 167196-01 in International class 40, No. 167197-01 in
International class 41, No. 167198-01 in International class 42, No. 167199-01 in International class 43,
No. 167200-01 in International class 44 and No. 167201-01 in International class 45 dated December 12,
2007, duly renewed.

The Complainant contends that its trademark SODEXO / SODEXHO has a strong reputation and is widely known all over the world and, previous UDRP panels have already recognized the well-known trademark status of the SODEXO / SODEXHO mark in several previous cases.

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

B. Respondent

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

6. Discussion and Findings

The Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:

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

of which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

Based on the facts presented by the Complainant, this Panel finds that the disputed domain name identically adopts the Complainant’s SODEXO trademarks in which the Complainant has rights under Policy, paragraph 4(a)(i). The Complainant has established its rights in the SODEXO trademarks through registration and use. The Panel finds that there is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s mark in full, with only the addition of the word “servicos” to the SODEXO mark, which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

B. Rights or Legitimate Interests

The Panel finds the following on record in this proceeding under the Policy:

The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks. The Respondent is using the disputed domain name as a parking page.

There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization.

There is no evidence on record that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel therefore finds that the Complainant has established an unrebutted prima facie case that the
Respondent has no rights or legitimate interests in the disputed domain name, under Policy

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paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or of a product or service offered on the Respondent’s site.

The Complainant’s trademark was registered long before the registration of the disputed domain name and it
is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the

Complainant’s SODEXO trademark when registering the disputed domain name.

Furthermore, the Complainant contends that SODEXO is already considered as well-known trademark.

The Panel finds that it is most likely that the Respondent was aware of the Complainant’s rights in the was made in bad faith.

Based on the evidence presented, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location, and this constitutes evidence of bad faith under Policy, paragraph 4(b)(iv).

Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy, paragraph 4(a)(iii).

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 <sodexoservicos.com>, be transferred to the Complainant.

/Erica Aoki/
Erica Aoki
Sole Panelist
Date: April 22, 2022