The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is 张存硕 (Cun Shuo Zhang), China. 2. The Domain Names and Registrars
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020. On February 11, 2020, the Center transmitted by email to Chengdu West Dimension Digital Technology Co., Ltd. and West263 International Limited (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On February 12, 2020, the Registrars transmitted by email to the Center their verification responses 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 February 14, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on February 19, 2020. On February 14, 2020, 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 February 17, 2020. 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 February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2020. The Center appointed Sok Ling MOI as the sole panelist in this matter on March 20, 2020. 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, founded in 1966, is a French company specialized in food services and facilities management. The Complainant has 460,000 employees serving customers in 72 countries, boasting a revenue of EUR 20.4 billion for fiscal year 2018. From 1966 to 2008, the Complainant promoted its business under the Sodexho name. In 2008, the Complainant simplified the spelling of its name to Sodexo, and has since been using it continuously and extensively as a trade mark for its business. The Complainant offers a range of services under its SODEXO mark, including restaurant and catering services, facility management services, workplace reception services, employee benefits and rewards services, childcare and tutoring services, concierge services etc. The Complainant owns trade mark registrations for SODEXO in several jurisdictions worldwide, including the following trade mark registrations: Jurisdiction Trade Mark Registration No. Registration Date Class European Union SODEXO (word) 008346462 February 1, 2010 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 European Union SODEXO (stylised) 006104657 June 27, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 International designating, inter alia, United Kingdom SODEXO (word) 1240316 October 23, 2014 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 International designating, inter alia, China SODEXO (stylised) 964615 January 8, 2008 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 France SODEXO (stylised) 3513766 July 16, 2007 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 The Complainant also owns the domain names The disputed domain names The Complainant contends that the disputed domain names all comprises SODEXO in its entirety and are therefore identical and/or confusingly similar to its trade marks SODEXO. The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade marks, the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant contends that the disputed domain names are used to create confusion to attract Internet users and to incite them to click on third party commercial links. The Complainant claims that the Respondent has registered and is using the disputed domain names in bad faith. For all of the above reasons, the Complainant requests the transfer of the disputed domain names to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Formality Issues - Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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. Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases. The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement has been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. Although the disputed domain names resolve to parking pages with click-through links generated in French (and there does not appear to have sufficient evidence showing that the Respondent is proficient in English), the Panel notes that: (a) the disputed domain names are registered in Latin script, rather than Chinese characters; (b) two of the disputed domain names registered by the Respondent comprise the English words “benefits” and “benefit” respectively; (c) the Center has notified the Respondent of the proceeding in both Chinese and English; (d) the Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and (e) the Center has informed the Respondent that it would accept a Response in either English or Chinese. Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding. The Panel would have accepted a Response in Chinese but none was filed. In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues - Findings Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in SODEXO by virtue of its use and registration of the same as a trade mark. The disputed domain names each incorporates the Complainant’s trade mark SODEXO in its entirety as a dominant component. The addition of “www” and/or the English words “benefits”, “benefit” or its typographical variant “benfits” does nothing to eliminate the confusing similarity between the disputed domain names and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark in this case. Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) 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 trade mark or service mark at issue. (See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.) The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the SODEXO trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights or legitimate interests in the term “sodexo”. The disputed domain names each resolves to a parking page with click-through links which redirects to other websites including the Complainant’s websites as well as the websites of the Complainant’s competitors. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant. Such use of the disputed domain names is neither legitimate nor fair. The Respondent is deemed responsible for the contents that appear at the disputed domain names. The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted 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 website or location or of a product or service on the respondent’s website or location. By virtue of its extensive use and advertising since at least 2008, the Complainant and its trade mark SODEXO enjoy a strong reputation worldwide and an online presence. A presumption can be made that the Respondent was aware of the Complainant’s trade mark and related domain names when it registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the SODEXO trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The disputed domain names each resolves to a parking page with click-through links which redirects to other websites including the Complainant’s websites as well as the websites of the Complainant’s competitors. As mentioned above, a domain name registrant is normally deemed responsible for content appearing on the website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. A presumption can be made that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s SODEXO trade mark resulting in misleading diversion. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case. That the Respondent registered three disputed domain names incorporating the Complainant’s SODEXO trade mark suggests that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark SODEXO in corresponding domain names. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are also applicable to the present case. The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith. Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names Sok Ling MOI
Sole Panelist
Date: April 6, 2020
Full & Egal Universal Law Academy