Sodexo v SGV Cyber, SGV and Company

WIPO Case No. D2024-5112

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. SGV Cyber, SGV and Company

Case No. D2024-5112

1. The Parties

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

The Respondent is SGV Cyber, SGV and Company, Philippines.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on Registrar verification in connection with the disputed domain name. On December 12, 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 Respondent named in the Complaint (Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 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 to the Complaint on December 16, 2024.

The Center verified that the Complaint together with the amendment to the 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 “WIPO 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 December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2025.

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The Center appointed Anton Polikarpov as the sole panelist in this matter on January 22, 2025. 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, headquartered in Issy-les-Moulineaux, France, is the world-leading company in food services and facilities management. For almost 60 years, it has grown to operate in 45 countries, serving millions of consumers daily across corporate, healthcare, education, government, and other sectors under a range of commercially successful brands, including SODEXO.

To protect its brand identity, the Complainant has obtained intellectual property rights in various jurisdictions for a series of trademarks, including the following:

- International trademark No. 404896 for SODEXHO, registered on March 1, 1974, covering goods and services in Classes: 35, 36, 37, 39, 41, and 42;

- International trademark No. 654281 for , registered on April 12, 1996, covering

goods and services in Classes: 16, 36, and 42;

- International trademark No. 689106 for , registered on January 28, 1998, covering goods and services in Classes: 16, 36, 37, 39, 41, and 42;
-	International trademark No. 694302 for , registered on June 22, 1998, covering goods in
Class: 09;
-

International trademark No. 964615 for , registered on January 8, 2008, covering

goods and services in Classes: 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- International trademark No. 1240316 for SODEXO, registered on October 23, 2014, covering goods and services in Classes: 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- International trademark No. 1301243 for SODEXO MEAL PASS, registered on March 24, 2016,

covering goods and services in Classes: 9 and 36.

The Complainant also owns several domain names incorporating its trademarks, including the following:
<sodexho.com> (registered on October 23, 1995), <sodexo.com> (registered on October 9, 1998),
<sodexousa.com> (registered on August 23, 2000), <sodexo.fr> (registered on January 14, 2008), and

others.

The disputed domain name was created on December 6, 2024 and currently resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant argues that each of the three UDRP elements is present in this case and requests to transfer of the disputed domain name in its favor.

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B. Respondent

The Respondent has not replied to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules sets out the principles to be followed by the Panel in resolving the case: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following: (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.

On other hand, under paragraph 5(c)(i) of the Rules, the Respondent is expected to: “[r]espond specifically
to the statements and allegations contained in the complaint and include any and all bases for the
Respondent (domain-name holder) to retain registration and use of the disputed domain name[…]”

In the present case, the Respondent has not taken the opportunity provided under the Rules and has not submitted a response to address the Complainant’s contentions and supporting evidence.

Accordingly, the Panel must resolve this administrative proceeding based on the Complainant’s uncontested factual allegations, in accordance with paragraphs 5(f) and 14 of the Rules.

A. Identical or Confusingly Similar

It is widely accepted that the first element serves primarily as a threshold requirement. The standing (or threshold) test for confusing similarity requires a reasoned yet straightforward comparison between the Complainant’s trademark and the disputed domain name (see the WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).

First, the Complainant has demonstrated rights in the SODEXO trademarks under the Policy (see the
WIPO Overview 3.0, section 1.2.1).

Second, the Complainant’s trademarks and corporate name are recognizable within the disputed domain name.

The Panel notes that the additional word element “deal” does not prevent a finding of confusing similarity under the first element.but may impact the assessment of the second and third elements of the Policy.

The presence of the Top-Level Domain (“TLD”) “.com” is irrelevant for the purpose of determining confusing
similarity, as it is a standard requirement of domain names registered under this TLD (see the
WIPO Overview 3.0, section 1.11.1).

Upon the foregoing, the Panel finds the disputed domain name to be confusingly similar to the trademarks held by the Complainant, hence the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant claims that the Respondent is holding the disputed domain name without legitimate interests, referring to two key points: (i) the Respondent is unknown to the Complainant like a person or an entity who could hold any license or raise any other justification for registration or use of the disputed domain

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name; (ii) the Respondent was not commonly known by the disputed domain name before the Complainant
adopted and began using the corporate name, business name, and SODEXO trademark.

According to section 2.1 of the WIPO Overview 3.0, the consensus view is that when a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to provide relevant evidence demonstrating rights or legitimate interests in the domain name. Absent such evidence, the complainant is deemed to have met the second element.

Paragraph 4(c) of the Policy outlines specific scenarios in which the Respondent may establish rights or legitimate interests in the disputed domain name, but the Respondent has not provided any arguments to support this.

Furthermore, it is not clear that the Respondent engaged in or prepared to engage in any use of the disputed domain name in connection with legitimate business or non-profit activities.

The passive holding of the disputed domain name does not amount to use or preparations to use it in
connection with a bona fide offering of goods and services. Nor is there any evidence indicating that the
Respondent is commonly known by the disputed domain name. Nor does passive holding of the disputed
domain name constitute legitimate noncommercial or fair use (see Instagram, LLC v. Zafer Demir, Yok,

WIPO Case No. D2019-1072).

The Respondent's failure to submit any arguments in this matter permits the Panel to conclude that the domain name remains uncontested and unrefuted.

Accordingly, the Complainant succeeds under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In this case, the Complainant has demonstrated rights in the trademarks, which were registered well before the registration of the disputed domain name.

The Panel emphasizes the well-known character of the Complainant’s trademarks, as repeatedly confirmed by previous UDRP decisions:

- “[…]the SODEXO trademark is so famous that it is impossible for any respondent to claim that he was unaware of SODEXO prior rights” (see Sodexo v. li jiang, WIPO Case No. D2023-0211);

- “The Mark is sufficiently distinctive and well‐known such that it is difficult to conceive of any use that

the Respondent might make of the disputed domain name without the Complainant’s consent that would not
involve bad faith” (see SODEXO v. Ashutosh Dwivedi, Food & Beverages, WIPO Case No. D2020-2686).

So, there is convincingly argued that substantial goodwill has been established in connection with the
SODEXO marks over time.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see the WIPO Overview 3.0, section 3.1.4).

Based on the available record, the Panel concludes that the Respondent was aware of the Complainant's trademarks and business at the time of registration of the disputed domain name. This indicates that the Respondent intentionally registered the disputed domain name to take advantage of the Complainant’s

successful brands and, most likely, its goodwill.

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Regarding bad faith use, the Panel notes that while the Respondent’s passive holding of the disputed domain name does not fall squarely within any of the enumerated circumstances set out in paragraph 4(b) of the Policy, such circumstances are not exhaustive.

From the inception of the UDRP, panelists have 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 (see the WIPO Overview 3.0, section 3.3).

The Respondent's passive holding of the disputed domain name demonstrates features typically linked to bad faith use, as recognized in established principles and prior UDRP decisions.

Furthermore, the presence of the word “phishing” in the Respondent's official email may indicate in this third parties using the specified contact.

In summary, in light of the evidence presented and, on the balance of probabilities, the Panel is likely to deem reasonable the Complainant's concerns about possible bad faith use.

It means that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sodexodeal.com>, be transferred to the Complainant.

/Anton Polikarpov /
Anton Polikarpov
Sole Panelist
Date: January 31, 2025