WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. 杨智超 (Zhichao Yang)
Case No. D2020-3397
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Names and Registrar
The disputed domain names <comsodexobenefitscenter.com>, <sodexobbenefitscenter.com>, <sodexobeenefitscenter.com>, <sodexobeenfitscenter.com>, <sodexobemefitscenter.com>, <sodexobeneditscenter.com>, <sodexobeneefitscenter.com>, <sodexobeneffitscenter.com>, <sodexobenefiitscenter.com>, <sodexobenefirscenter.com>, <sodexobenefiscenter.com>, <sodexobenefistcenter.com>, <sodexobenefitacenter.com>, <sodexobenefitcsenter.com>, <sodexobenefitescenter.com>, <sodexobenefitsccenter.com>, <sodexobenefitscebter.com>, <sodexobenefitsceenter.com>, <sodexobenefitscemter.com>, <sodexobenefitscener.com>, <sodexobenefitscenetr.com>, <sodexobenefitscennter.com>, <sodexobenefitscenrer.com>, <sodexobenefitscente.com>, <sodexobenefitscentee.com>, <sodexobenefitscenteer.com>, <sodexobenefitscenterr.com>, <sodexobenefitscenters.com>, <sodexobenefitscentet.com>, <sodexobenefitscentr.com>, <sodexobenefitscentre.com>, <sodexobenefitscentter.com>, <sodexobenefitscentwr.com>, <sodexobenefitscenyer.com>, <sodexobenefitsceter.com>, <sodexobenefitscetner.com>, <sodexobenefitscneter.com>, <sodexobenefitscnter.com>, <sodexobenefitscrnter.com>, <sodexobenefitscwnter.com>, <sodexobenefitsecnter.com>, <sodexobenefitsenter.com>, <sodexobenefitsscenter.com>, <sodexobenefitsventer.com>, <sodexobenefitsxenter.com>, <sodexobenefittscenter.com>, <sodexobenefiyscenter.com>, <sodexobenefltscenter.com>, <sodexobeneftiscenter.com>, <sodexobeneftscenter.com>, <sodexobenefutscenter.com>, <sodexobenegitscenter.com>, <sodexobeneiftscenter.com>, <sodexobeneitscenter.com>, <sodexobenfeitscenter.com>, <sodexobenifetscenter.com>, <sodexobenifit.com>, <sodexobennefitscenter.com>, <sodexobenrfitscenter.com>, <sodexobenwfitscenter.com>, <sodexobneefitscenter.com>, <sodexobnefitscenter.com>, <sodexobrnefitscenter.com>, <sodexobwnefitscenter.com>, <sodexocenterbenefits.com>, <sodexocenter.com>, <sodexoebnefitscenter.com>, <sodexoenefitscenter.com>, <sodexonenefitscenter.com>, <sodexoobenefitscenter.com>, <sodexosbenefitscenter.com>, <sodexovenefitscenter.com>, <ssodexobenefitscenter.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2021 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 January 6, 2021.
On January 4, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on January 6, 2021. The Respondent did not comment on the language of the proceeding.
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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on February 25, 2021. 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, SODEXO, was founded in 1966 and is one of the largest food services and facilities management companies in the world, with 470,000 employees serving 100 million consumers in 67 countries.
SODEXO provides restaurant and catering services, as well as facility management services, workplace services, benefits and rewards services, and personal and home services.
The Complainant has an extensive global portfolio of SODEXO trade marks, which includes the following:
- International Trade Mark Registration No. 964615 figurative mark in Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 extended to China, Singapore, Russian Federation, United States of America, etc., registered on January 8, 2008;
- International Trade Mark Registration No. 689106 figurative mark in Classes 16, 36, 37, 39, 41 and 42 extended to China, Russian Federation, United Kingdom, etc., registered on January 28, 1998;
- International Trade Mark Registration No. 694302 figurative mark in Class 9 extended to China, Russian Federation, United Kingdom, etc., registered on June 22, 1998;
- International Trade Mark Registration No. 1195702 figurative mark in Classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 extended to China, Australia and United States of America, registered on October 10, 2013.
The disputed domain names were registered on November 10, 2020, and November 11, 2020.
The Complainant asserts that at the time of filing the Complaint, all 73 disputed domain names resolved to pay-per-click parking websites.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it has prior rights in the SODEXO trade marks and that it is a leading player in its fields of business.
The Complainant further notes that the 73 disputed domain names registered by the Respondent are all identical or confusingly similar to the Complainant’s SODEXO trademarks, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.
The Complainant asserts that it has not authorized the Respondent to use the SODEXO mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Indeed, the Complainant asserts that the Respondent has associated all 73 disputed domain names with an identical pay-per-click parking page that directs Internet users to the business of the Complainant’s competitor. The Complainant also asserts that there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain names, especially after considering the circumstances, any use of the disputed domain names must be in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
In accordance with paragraph 11 of the Rules:
“[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In this case, the language of the Registration Agreement for the disputed domain names is in Chinese.
However, the Complainant filed the Complaint in English, and requested the Panel to consider using English as the language of the proceeding.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not object or submit any further formal response.
Accordingly, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English.
B. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the SODEXO trade mark in many territories around the world.
Disregarding the “.com” gTLD, the disputed domain names incorporate the SODEXO trade mark in its entirety. Thus, the disputed domain names should be regarded as identical to the Complainant’s SODEXO trade mark, despite the inclusion of the term “benefits center” and various misspellings present in all 73 disputed domain names. It is worth noting that benefits centers are an important service provided by the Complainant.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SODEXO trademark and in showing that the disputed domain names are identical or confusingly similar to its mark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Complainant has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
Thus, the Complainant has established its prima facie case with sufficient evidence.
The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain names. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain names, and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain names, given the extensive prior use and fame of these marks.
When the Respondent registered the disputed domain names in November 2020, the SODEXO trade marks were already widely known and directly associated with the Complainant’s activities.
The Respondent has provided no evidence to justify his registration of the disputed domain names. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain names – was unaware of the Complainant’s trade marks, or that the Respondent’s adoption of the uncommon and distinctive name “sodexo” was a mere coincidence.
The Complainant’s registered trade mark rights in SODEXO for its signature products and services predate the registration date of the disputed domain name by decades. A simple search on search engine against the term “sodexo” would have no doubt revealed that it is a world-renowned brand.
Given the foregoing, the Panel is of the view that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trade mark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trade marks. In doing so, the Respondent has registered and used the disputed domain names to create a likelihood of confusion with the Complainant’s trade marks in order to attract Internet users.
Meanwhile, there is no indication of a good faith attempt by the Respondent to prevent the appearance of the offending advertising links connecting to the Complainant’s competitor’s businesses. Thus, absent evidence to the contrary, it is reasonable to assume that the Respondent was aware of the Complainant’s trade marks when he registered the disputed domain names, and registered them targeting the Complainant’s trade marks.
The Panel therefore finds that the disputed domain names were registered and are being used in bad faith.
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 names: <comsodexobenefitscenter.com>, <sodexobbenefitscenter.com>, <sodexobeenefitscenter.com>, <sodexobeenfitscenter.com>, <sodexobemefitscenter.com>, <sodexobeneditscenter.com>, <sodexobeneefitscenter.com>, <sodexobeneffitscenter.com>, <sodexobenefiitscenter.com>, <sodexobenefirscenter.com>, <sodexobenefiscenter.com>, <sodexobenefistcenter.com>, <sodexobenefitacenter.com>, <sodexobenefitcsenter.com>, <sodexobenefitescenter.com>, <sodexobenefitsccenter.com>, <sodexobenefitscebter.com>, <sodexobenefitsceenter.com>, <sodexobenefitscemter.com>, <sodexobenefitscener.com>, <sodexobenefitscenetr.com>, <sodexobenefitscennter.com>, <sodexobenefitscenrer.com>, <sodexobenefitscente.com>, <sodexobenefitscentee.com>, <sodexobenefitscenteer.com>, <sodexobenefitscenterr.com>, <sodexobenefitscenters.com>, <sodexobenefitscentet.com>, <sodexobenefitscentr.com>, <sodexobenefitscentre.com>, <sodexobenefitscentter.com>, <sodexobenefitscentwr.com>, <sodexobenefitscenyer.com>, <sodexobenefitsceter.com>, <sodexobenefitscetner.com>, <sodexobenefitscneter.com>, <sodexobenefitscnter.com>, <sodexobenefitscrnter.com>, <sodexobenefitscwnter.com>, <sodexobenefitsecnter.com>, <sodexobenefitsenter.com>, <sodexobenefitsscenter.com>, <sodexobenefitsventer.com>, <sodexobenefitsxenter.com>, <sodexobenefittscenter.com>, <sodexobenefiyscenter.com>, <sodexobenefltscenter.com>, <sodexobeneftiscenter.com>, <sodexobeneftscenter.com>, <sodexobenefutscenter.com>, <sodexobenegitscenter.com>, <sodexobeneiftscenter.com>, <sodexobeneitscenter.com>, <sodexobenfeitscenter.com>, <sodexobenifetscenter.com>, <sodexobenifit.com>, <sodexobennefitscenter.com>, <sodexobenrfitscenter.com>, <sodexobenwfitscenter.com>, <sodexobneefitscenter.com>, <sodexobnefitscenter.com>, <sodexobrnefitscenter.com>, <sodexobwnefitscenter.com>, <sodexocenterbenefits.com>, <sodexocenter.com>, <sodexoebnefitscenter.com>, <sodexoenefitscenter.com>, <sodexonenefitscenter.com>, <sodexoobenefitscenter.com>, <sodexosbenefitscenter.com>, <sodexovenefitscenter.com>, <ssodexobenefitscenter.com> be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: March 11, 2021
