ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sodexo v. 申中朝 (Shen Zhong Chao) Case No. D2023-2233 1. The Parties The Complainant is Sodexo, France, represented by Areopage, France. The Respondent is 申中朝 (Shen Zhong Chao), China. 2. The Domain Names and Registrar The disputed domain names and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2023. On May 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 25, 2023, 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 May 25, 2025, 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 25, 2023. On May 25, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 25, 2023, the Complainant submitted 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 June 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2023. The Respondent's informal page 2 communication was received on May 25, 2023 by the Center. The Center notified the Commencement of Panel Appointment Process to the Parties on June 27, 2023. The Center appointed Francine Tan as the sole panelist in this matter on July 3, 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. 4. Factual Background The Complainant, Sodexo, was founded in 1966 in France. The Complainant states that it is one of the largest companies in the world specializing in food services and facilities management, with 422,000 employees serving 100 million customers daily in 53 countries. The Complainant's consolidated revenues reached 21.1 EUR billion in the fiscal year 2022. 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 to SODEXO and changed its logo from to . The Complainant provides a wide range of services under its SODEXO trade name and mark through offering on-site services, benefit and reward services, as well as personal and home services. The on-site services comprise restaurant and catering services, as well as facility management services and workplace services including a wide range of on-site services such as reception services, technical maintenance and repair, and so forth. The Complainant issues service vouchers and cards for private and public organizations in four service categories, namely, employee benefits, incentives and recognition, public benefits and fuel & fleet, and expense management. The Complainant also provides personal and home services. The Complainant's business is established in many countries including in China. The Complainant owns numerous domain names corresponding to and/or containing the trade mark SODEXO or SODEXHO. The Complainant's Group promotes its activities, among others, under the domain names , , , , , , , , and . The Complainant is the registered owner of numerous SODEXO and SODEXHO word and figurative trade marks, including the following: - International Trade Mark Registration No. 964615 for , registered on January 8, 2008, designating, inter alia, China, amongst many other jurisdictions; - International Trade Mark Registration No. 1240316 for SODEXO, registered on October 23, 2014; - European Union Trade Mark Registration No. 008346462 for SODEXO, registered on February 1, 2010; and - International Trade Mark Registration No. 689106 for , registered on January 28, 1998, designating, inter alia, China. The disputed domain names were registered on May 15, 2023, and resolve to parking pages listing the disputed domain names for sale. page 3 5. Parties' Contentions A. Complainant 1. The disputed domain names are confusingly similar to the Complainant's SODEXO marks. The disputed domain names comprise the Complainant's SODEXO mark with the addition of the letters "oss". The term "oss" will be understood by consumers as the abbreviation of "On-Site Services". The Complainant's SODEXO mark is dominant in the disputed domain names and the addition of the letters "oss" is inoperative to distinguish it from the Complainant's mark. Instead, there is increased risk of confusion or association with the Complainant's SODEXO mark as it is used by the Complainant for providing On-Site Services. Given the identical reproduction of the SODEXO mark, the public will believe that the disputed domain names come from the Complainant's SODEXO group or are linked to the Complainant. 2. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no rights to SODEXO as a corporate name or business name, or as a trade mark. The Respondent is not commonly known by the disputed domain names. 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 names and to use them. 3. The disputed domain names were registered and are being used in bad faith. The sign SODEXO is purely fanciful, and nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant's activities and SODEXO mark. Given the wellknown character and reputation of the SODEXO mark, the Respondent knew of its existence when he registered the disputed domain names, especially in association with the letters "oss". The Respondent therefore knew that he has no rights or legitimate interests in the disputed domain names and could not lawfully use them. 4. Previous decisions issued by UDRP panels have recognized that actual knowledge of the complainants' trade marks and activities at the time of the registration of the disputed domain names may be considered an inference of bad faith. The Respondent knew of the SODEXO mark and wanted to benefit from its reputation. It is obvious that the Respondent registered the disputed domain names with actual knowledge of the Complainant's rights in the SODEXO mark for the purpose of creating confusion with the Complainant's mark to divert or mislead third parties for the Respondent's illegitimate profit. The Respondent's email offering the disputed domain names for sale shows commercial use by the Respondent and that the disputed domain names are being used by the Respondent in bad faith. When the Respondent registered and used the disputed domain names, it was very likely that the Respondent's purpose was to sell them at a profit as he was offering the disputed domain names for sale to the general public. 5. The Respondent was involved in many earlier UDRP cases, in which the panels ordered the transfer of the domain names containing third-party trade marks that were registered by the Respondent. 6. The Complainant also states that UDRP panels have recognized the well known character of its SODEXO and SODEXHO marks in earlier cases: Sodexo v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1580; Sodexo v. Contact Privacy Inc. Customer 1247189803 / NorAm Accounts Receivable, WIPO Case No. D2020-1683; SODEXO v. Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-1762; and SODEXO v. Zhichao Yang ( 杨智超 ), WIPO Case No. D2020-2286. page 4 B. Respondent The Respondent did not file a formal Response. However, on May 25, 2023, the Respondent sent the Center several email communications stating: "Hello, may I ask why these two domain names are arbitrated? Whose rights are we violating? Can we reconcile?" (the "Respondent's 1st Email"). On the same day, the Complainant in this proceeding responded to the Respondent that the Respondent had infringed the Complainant's rights, and attached a settlement form to the Respondent and requested a transfer of the disputed domain names to the Complainant. In response, the Respondent requested payment of USD 1,000 for the transfer of the disputed domain names to the Complainant (the "Respondent's 2nd Email"). The Complainant informed the Respondent that the Complainant was unwilling to pay for the transfer and would continue pursuing the proceeding. A further email was sent by the Respondent to the Complainant, also in English (the "Respondent's 3rd Email") asking for the payment and claiming that he did not intentionally violate the Complainant's rights. The Complainant refused on the basis that the proposal attested the Respondent's bad faith. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding The language of the Registration Agreements for the disputed domain names is Chinese. The Complainant requested that the language of the proceeding be English for following reasons: (i) the Complainant is unable to communicate in Chinese; (ii) requiring the Complaint to be translated into Chinese would result in the proceedings being unduly delayed and the Complainant to incur substantial expenses for translation; and (iii) the disputed domain names comprise Latin script rather than Chinese characters. The Respondent did not comment on the language of the proceeding. Paragraph 11(a) of the Rules provides that: "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." Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states the following: "Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) page 5 currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement." Having considered the relevant factors and interests of the respective Parties, the Panel determines that it would be appropriate for English be the language of the proceeding. The Panel is persuaded that the Respondent would not be prejudiced as he is clearly familiar with and understands the English language, taking into account the Respondent's 1st, 2nd, and 3rd Emails in English. The Respondent had, moreover, been notified by the Center, in both Chinese and English language, of the commencement of the proceeding, the language of the Registration Agreement, and deadline for filing a Response. The Respondent therefore had ample opportunity to object and/or propose to submit his Response in Chinese but did not do so. In the absence of any rebuttal argument or justification therefor by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint into Chinese. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has established it has rights in the SODEXO trade mark. The disputed domain names comprise the said trade mark in its entirety with the addition of "-oss" and "oss", respectively. The Panel is of the view that the term "oss" or "-oss", which appears to be an abbreviation for "On-Site Services" does not prevent a finding of confusing similarity with the SODEXO mark. In addition, the inclusion of the hyphen does not avoid confusing similarity with the Complainant's trade mark that is recognizable within the disputed domain names. (See WIPO Overview 3.0, sections 1.7 and 1.8.) The generic Top-Level Domain ".com" is a technical requirement for domain name registrations and does not have any impact when considering the first element of the Policy, and are generally disregarded on the issue of the identity or confusing similarity between the disputed domain names and the Complainant's trade mark. (See WIPO Overview 3.0, section 1.11.1.) The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant's registrations and long-standing use of the SODEXO trade marks predate the registration date of the disputed domain names. The Complainant did not license nor authorize the Respondent to use the trade mark in a domain name. Neither is there any evidence that the Respondent is commonly known by the name "Sodexo" or any of the disputed domain names. The Respondent's choice of a combination of a trade mark and abbreviation associated with the Complainant's business show a clear intent to obtain an unfair commercial gain, with a view to misleadingly divert consumers looking for the Complainant. Having established a prima facie case, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names. The Respondent did not file a Response in the present case to rebut the Complainant's assertions and evidence. It is notable that in the Respondent's 2nd and 3rd Emails, it did not assert any rights or legitimate interests in the disputed domain names. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. page 6 C. Registered and Used in Bad Faith The Panel is persuaded in the circumstances of this case that the Respondent targeted the Complainant and its SODEXO trade mark, which has a strong reputation and is well known. There is no other reason for the Respondent to have registered the disputed domain names except for the sole purpose of riding off the reputation and goodwill in the Complainant's SODEXO trade mark and to create confusion with the Complainant's SODEXO trade mark and business: "If [.] circumstances indicate that the respondent's intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant's trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent's likely knowledge of the complainant's rights, (ii) the distinctiveness of the complainant's mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant's trademark, e.g., through links to the complainant's competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to "sell to the highest bidder" or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, [.] Particularly where the domain name at issue is identical or confusingly similar to a highly distinctive or famous mark, panels have tended to view with a degree of skepticism a respondent defense that the domain name was merely registered for legitimate speculation (based for example on any claimed dictionary meaning) as opposed to targeting a specific brand owner." (See section 3.1.1 of the WIPO Overview 3.0.) In this case, the Respondent advertised the disputed domain names for sale and by the Respondent's 2nd and 3rd Emails, requested payment of USD1,000 for the transfer of the disputed domain names. This is an amount in excess of out-of-pocket costs directly related to the disputed domain names. Such conduct clearly indicates that the Respondent registered the disputed domain names primarily for selling, renting, or otherwise transferring the disputed domain names to the Complainant. (See section 3.1.1 of the WIPO Overview 3.0.) The Panel also draws an adverse inference from the apparent pattern of abusive domain name registrations. It can be surmised that the Respondent fully appreciated the value associated with the SODEXO trade mark, which is why it registered the disputed domain names that are a combination of these trade mark with an abbreviation affiliated with the Complainant's business. The Respondent hoped to draw Internet traffic and cause confusion among Internet users who may be searching for the Complainant's products or services or to sell the disputed domain names for profit. The Panel therefore concludes that the Respondent has registered and is using the disputed domain names in bad faith. The Panel accordingly finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 and be transferred to the Complainant. /Francine Tan/ Francine Tan Sole Panelist Date: July 6, 2023
Full & Egal Universal Law Academy