Sodexo v Victor Lim

WIPO Case No. D2023-3858

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Victor Lim

Case No. D2023-3858

1. The Parties

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

The Respondent is Victor Lim, Philippines.

2. The Domain Name and Registrar

The disputed domain name <sodexo-food.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2023. On September 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2023, 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 the same day.

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 2, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2023.

The Center appointed James Wang as the sole panelist in this matter on November 7, 2023. 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.

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4. Factual Background

The Complainant is a French company founded in 1966. The Complainant is one of the largest companies
in the world specialized in foodservices and facilities management, with 422,000 employees serving daily

100 million consumers in 53 countries.

The Complainant has, among others, registered the following trademarks containing SODEXO mark:

- International Registration No. 964615, registered on January 8, 2008;
- International Registration No. 1240316, registered on October 23, 2014;
- European Registration No. 008346462, registered on February 1, 2010; and

- European Registration No. 006104657, registered on June 27, 2008.

The Complainant also owns domain names corresponding to or containing “sodexo”, such as “sodexo.com”.

The disputed domain name was registered on September 11, 2023, and resolved to a parking page with pay-per-click (PPC) links purportedly connecting to the Complainant’s competitor’s websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

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

The Complainant requested that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

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

Complainant has rights; and

(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 provided evidence that it is the registrant of multiple SODEXO trademark registrations across different jurisdictions.

The disputed domain name incorporates the entirety of the Complainant’s SODEXO trademark. As the confusingly similar to the Complainant’s trademark. The addition of the term “food” into the disputed domain

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name, with a hyphen added in between, does not prevent a finding of confusing similarity. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section

1.8.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

The Complainant alleges that the Respondent has no rights on SODEXO as corporate name, trade name, shop sign, mark or domain name. The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark SODEXO. The Respondent does not have any affiliation, association, sponsorship, or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.

According to the Complaint, the disputed domain name resolved to a parking page purportedly connecting to the Complainant’s competitor’s websites. Such use does not represent a bona fide offering of goods and services, and cannot confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.9.

The Respondent submitted no response or evidence to rebut the allegations of the Complainant, or to establish that the Respondent is making a bona fide use, or a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence that the Complainant’s trademark SODEXO has been registered in different jurisdictions and is famous for foodservices and facilities management. The distinctiveness and reputation of the Complainant’s trademark SODEXO has been upheld by prior UDRP decisions.

While the Complainant and its SODEXO trademark are well known for food services, the disputed domain name is comprised of “sodexo” and “-food”.

Given the above, it would be inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant or the SODEXO trademark at the time of the registration. The Panel therefore finds that the disputed domain name was registered in bad faith.

Meanwhile, the Complainant’s evidence shows that the disputed domain name resolved to a parking page with PPC links purportedly connecting to the Complainant’s competitor’s websites, which indicates that the Respondent has an intent to profit in some fashion from or otherwise exploit the Complainant’s trademark. The Panel therefore finds that the Respondent is using the disputed domain name in bad faith.

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Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Finally, the use of the disputed domain name to generate PPC revenue by advertising competitors of the Complainant is evidence of bad faith for purposes of the Policy. See WIPO Overview 3.0, section 3.1.4 and 3.5.

The Panel finds that the Complaint 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 <sodexo-food.com> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: November 21, 2023