The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is 杨智超 (Zhi Chao Yang), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 12, 2020, 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 May 13, 2020 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 in English on May 15, 2020. On May 13, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 15, 2020, the Complainant confirmed its request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020. The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 15, 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 one of the largest companies in the world specializing in foodservices and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. In 2008, the Complainant simplified the spelling of its mark and trade name to SODEXO. The Complainant is the registered owner of the following trademarks: (1) SODEXO, International Trademark Registration No. 1240316, registered on October 23, 2014. (2) SODEXHO (figurative), International Trademark, Registration No. 689106, registered on January 28, 1998 under priority of the French trademark registration No. 96654774, registered on December 10, 1996, renewed, designating China. (3) SODEXO, European Union Trade Mark Registration No. 008346462, registered on February 1, 2010. (4) SODEXO (figurative), European Union Trade Mark Registration No. 006104657, registered on June 27, 2008, renewed. (5) SODEXO QUALITY OF LIFE SERVICES (figurative), International Trademark Registration No. 1195702, registered on October 10, 2013 based on European Union Trade Mark Registration No. 011138501, registered on January 22, 2013. The Complainant has a strong reputation and is widely known all over the world, and previous UDRP panels have recognized the well-known character of the SODEXHO / SODEXO mark in several cases. The Complainant has numerous domain names corresponding to and/or containing SODEXO or SODEXHO mark. The Complainant promotes its activities among others under the following domain names: The Respondent is an individual in China, and the Disputed Domain Name The Complainant’s contentions could be summarized as follows: (i) The Disputed Domain Name is identical or confusingly similar to the SODEXO and SODEXHO trademarks in which the Complainant has rights. The Disputed Domain Name incorporates the SODEXO trademark in its entirety, with an additional element “benefitd center”. “Benefitd” is a misspelling of the word “Benefits”. Therefore, “benefitd center” element is a generic or descriptive term and is not able to create a sufficient distinction between the Disputed Domain Name and the Complainant’s trademark. In addition, the Panel already found that the domain names (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name The Respondent does not own any trademark, trade name or any other right in the name Sodexo and Sodexho. 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 or SODEXHO. In addition, the Respondent is not licensed or authorized by the Complainant to use the Complainant’s SODEXO or SODEXHO trademark in any form. In the light of these circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. (iii) The Disputed Domain Name The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant’s SODEXO trademark. The Respondent intentionally uses the Disputed Domain Name to attract Internet users for commercial gain. Moreover, the Respondent’s failure to do a trademark search before registering the Disputed Domain Name and registering the Disputed Domain Name The Respondent did not reply to the Complainant’s contentions. 6. Language of Proceeding Paragraph 11(a) of the Rules provides that “[u]nless 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) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.” The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant confirmed its request that the language of the proceeding be English on May 15, 2020. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Given the following factors, the Panel decides that the language of the proceeding be English. (1) The Disputed Domain Name (2) Given that the content of the website to which the Disputed Domain Name resolves contains extensive use of English and French, it appears that the Respondent understands and is able to communicate in English. The Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese; (3) The Center sent an email communication to the Parties in both Chinese and English on May 13, 2020 inviting them to comment on the language of the proceeding. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center also formally notified the Respondent in both Chinese and English of the Complaint on May 19, 2020. However, the Respondent has chosen not to file a Response. Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint, and has chosen not to respond. Therefore, it would not be prejudicial to the Respondent in his abilities to articulate his arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali,WIPO Case No. D2013-1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present: (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 alleges that the Disputed Domain Name The Complainant has established that it is the owner of trademarks SODEXO and SODEXHO. The Disputed Domain Name incorporates the Complainant’s SODEXO trademark in its entirety and includes the additional “benefitd center” element. Further, the Complainant’s SODEXHO trademark is also recognizable in the Disputed Domain Name. Although “benefitd” is not totally same as “benefits”, the letters “d” and “s” are placed next to each other on QWERTY AZERTY keyboards. Hence, the element “benefitd” is perceived by the public as an obvious misspelling of the word “benefits”. Therefore, the addition of the “benefitd center” element does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]” Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]: (i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.” The Complainant has established that it is the owner of the SODEXO and SODEXHO trademarks, and that is has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of Sodexo or similar. And the Disputed Domain Name resolves to a parking webpage with several commercial links, some of which are related to the Complainant’s competitors. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy. Having considered the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.” Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: […] “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”. With respect to “automatically” generated pay-per-click links, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name. See WIPO Overview 3.0, section 3.5. The panel finds that “whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolves.” (See StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC, WIPO Case No. D2018-0497). The Complainant’s SODEXO and SODEXHO trademarks have been registered in many countries around the world and the SODEXHO trademark is registered in China. Both of these registrations were made prior to the registration of the Disputed Domain Name. The Respondent chose the “sodexo” as the part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “sodexo” with the additional term “benefitd center” for any reason other than the reputation of the Complainant’s trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith. The Disputed Domain Name resolves to a website with commercial links, some of which are related to the Complainant’s competitors. There is no evidence in the record to support a finding that this use has been for any reason other than the intent to attract Internet users for commercial gain. The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. This use of the Disputed Domain Name is in bad faith. Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Peter J. Dernbach
Sole Panelist
Date: June 29, 2020
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