The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is 邱华兵 (Qiu Hua Bing), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2021, 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 10, 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 in English on May 14, 2021. On May 10, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 13, 2021, the Complainant submitted a 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2021. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 1, 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 is a multinational company headquartered in France, founded in 1966 and operating in the food services and facilities industry. The Complainant claims to be one of the largest companies and employers in the world with 470,000 employees, providing services to 100 million consumers throughout 67 countries. From 1966 to 2008, the Complainant promoted its business under the SODEXHO mark and trade name. However, in 2008, the Complainant simplified the spelling of its main house mark and trade name to SODEXO. The Complainant provides evidence that it owns a large trademark portfolio for both SODEXO and SODEXHO, including, but not limited to, Chinese trademark registration number 1160675 for SODEXHO, registered on March 21, 1998, and international trademark registration number 964615 for the SODEXO logo mark registered on January 8, 2008 (under priority of the French trademark registration number 3513766 of July 16, 2007), and designating, amongst other jurisdictions, China, Switzerland, and the European Union. The disputed domain name was registered on July 21, 2019, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directed to a blog and commercial website concerning clothing and beauty products. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for SODEXO and SODEXHO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as a large number of prior UDRP decisions which have recognized that the Complainant’s trademark for SODEXO and/or SODEXHO are well-known, see for instance Sodexo v. Jack Brabham,WIPO Case No. D2014-1781, and Sodexo v. Li Li,WIPO Case No. D2015-1018. The Complainant particularly submits that that the Respondent is using the disputed domain name to direct Internet users to a blog and commercial website concerning clothing and beauty products, that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. The Complainant request that the disputed domain name be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the administrative proceeding Pursuant to paragraph 11(a) 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. The language of the Registration Agreement is Chinese. Nevertheless, the Complainant filed its Complaint and the amendment to its Complaint in English, and requested that English be the language of the proceeding on May 13, 2021. The Respondent did not comment on the language of the proceeding and did not submit arguments on the merits of this proceeding. The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited to present its response and arguments in either English or Chinese); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English. 6.2. Discussion and Findings on the merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the marks SODEXO and SODEXHO based on its intensive use and longstanding registration of the same as trademarks. As to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the combination of two elements, namely the Complainant’s SODEXHO trademark combined with a hyphen, followed by the term “mx”. The applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. The Panel finds that the hyphen may also be disregarded as it is considered merely a punctuation mark (see also Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng,WIPO Case No. D2016-1262). Furthermore, according to the WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademarks for SODEXHO, which remains easily recognizable as its only distinctive feature. The Panel furthermore agrees with the Complainant that the term “mx” is commonly used as an abbreviation for the country Mexico (noting, for instance that the TLD “.mx” is the country code Top-Level Domain (“ccTLD”) for Mexico), and can, as such, be considered a purely geographical term which does not prevent the Complainant’s trademark from being recognizable within the disputed domain name from the Complainant’s trademarks. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directed to a blog and commercial website concerning clothing and beauty products, which shows the intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainant’s well-known SODEXHO trademark in the disputed domain name. However, on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in its entirety in the disputed domain name to mislead and divert consumers to the disputed domain name. Given the distinctiveness and well-established fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent clearly knew, or at least should have known, of the existence of the Complainant’s well-known marks. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in SODEXO and SODEXHO and used these extensively, including in the Respondent’s location, China. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to a blog and commercial website concerning clothing and beauty products. The Panel accepts that this showed the intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainant’s famous SODEXHO trademark in the disputed domain name. However, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3, provides: “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.” The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, and to the high degree of distinctiveness and well-established fame of the Complainant’s trademarks, even in the Respondent’s country of residence, China. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith (see in this sense also prior UDRP decisions such as Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,WIPO Case No. D2004-0245). On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 Deanna Wong Wai Man
(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.
Sole Panelist
Date: July 12, 2021
Full & Egal Universal Law Academy