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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. zhanghui, zhanghui

Case No. D2021-2011

1. The Parties

Complainant is Sodexo, France, represented by Areopage, France.

Respondent is zhanghui, zhanghui, China.

2. The Domain Name and Registrar

The disputed domain name <sodexho-au.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 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 Complainant on June 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 2021.

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 Respondent of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 27, 2021.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on August 6, 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

Respondent registered the disputed domain name on March 8, 2021. Complainant has numerous registrations for the SODEXHO and SODEXO marks and a number of variations thereof, in 64 countries, with registration dates going back to at least 1983, including the International Trademark Registration No. 689106 for SODEXHO registered on January 28, 1998, designating China, and the Chinese Trademark Registration No. G964615 for SODEXO registered on January 8, 2008. Complainant’s mark is used in connection with numerous business-related services, particularly relating to foodservices and facilities management. Complainant has presented evidence that the disputed domain name is being used, without Complainant’s permission or approval, for a pornographic website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it was founded in 1966 and is one of the largest companies in the world specializing in foodservices and facilities management, with 420,000 employees serving 100 million consumers in 64 countries, and revenue of EUR 19.3 billion in fiscal year 2020. Complainant asserts that it provides the following services under the SODEXO and SODEXHO marks: on-site services (such as reception, technical maintenance and repair, housekeeping, security, laundry, waste management, and space management), benefits and rewards services, and personal and home services. Thus, Complainant asserts that the SODEXHO and SODEXO marks have a strong reputation and are known worldwide. Complainant asserts that the disputed domain name consists of Complainant’s SODEXHO mark along with the letters “au”, that the “au” refers to Australia, and that the disputed domain name “is understood as referring to the activities or projects of the company SODEXO (former[ly] named SODEXHO) in Australia”. Complainant thus asserts that the disputed domain name will be confused as being associated with Complainant. Complainant has provided evidence that the disputed domain name leads to a pornographic website. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name in that Respondent is not commonly known by the disputed domain name, is not affiliated with Complainant, and is not authorized by Complainant to register or use the disputed domain name. Complainant also asserts that the disputed domain name was registered and is being used in bad faith in that the disputed domain name was registered with actual knowledge of Complainant’s marks, and is being used to attract Internet users to a pornographic website for commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.

Complainant’s trademark registrations listed in the Annexes to the Complaint demonstrate that Complainant has rights in the SODEXHO mark.

The disputed domain name consists of the SODEXHO mark, followed by a hyphen, followed by the letters “au”, with the “.com” generic Top Level Domain (“gTLD”) at the end. Generally, “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”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8. Thus, the use of “au” in the disputed domain name (which is a commonly-associated geographic abbreviation for Australia) would not prevent a finding of confusing similarity. The addition of a hyphen in the middle of Complainant’s mark and the addition of the “.com” gTLD also do not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the [disputed] domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant asserts that Respondent is using the disputed domain name for a commercial pornographic website.

These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., Sodexo v. Wang Bo, WIPO Case No. D2019-2179 (“[T]he disputed domain name redirects to a website offering payment services and pornographic content. That is not a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.”); Sodexo v. Li Li, WIPO Case No. D2015-1018 (“Respondent’s use of the disputed domain name to attract consumers to other web pages [including a page with a pornographic picture] was an obvious attempt to mislead customers seeking the Complainant’s services and website and redirect them to websites of financial interest to the Respondent. Such use does not establish rights or legitimate interests … .”).

Furthermore, the disputed domain name consists of Complainant’s SODEXHO trademark in its entirety, followed by a hyphen and the geographic abbreviation for Australia, the nature of which results in a risk of implied affiliation to Complainant, which cannot confer rights or legitimate interests. WIPO Overview 3.0, section 2.5.1.

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he 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:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or

(ii) [Respondent has] registered the [disputed] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [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, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that Respondent most likely was aware of Complainant’s SODEXHO and SODEXO marks when Respondent registered and used the disputed domain name, “and knew that he had no rights or legitimate interests in the disputed domain name”. Complainant further asserts that Respondent registered and is using the disputed domain name for the purpose of commercial gain in connection with a pornographic website.

“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview 3.0, section 3.1.4. See also SODEXO v. Shahzan / PrivacyProtect.org, WIPO Case No. D2013-1308 (“the registration of a domain name incorporating a widely-recognized or well-known trade mark by someone who has no connection whatsoever with the trade mark is a clear indication of bad faith”).

The registration and use of a domain name that is confusingly similar to another party’s trademark in order to attract Internet users to a website for commercial gain is evidence of bad faith under paragraph 4(b)(iv) of the Policy, and the use of such a domain name in a manner that tarnishes a complainant’s mark also may constitute evidence of a respondent’s bad faith. See WIPO Overview 3.0, section 3.12 (“Noting that noncommercial fair use without intent to tarnish a complainant’s mark is a defense under the second element, using a domain name to tarnish a complainant’s mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent’s bad faith.”); Sodexo v. Wang Bo, WIPO Case No. D2019-2179 (“Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s SODEXO trademark, to redirect to a website offering for sale payment services and pornographic content. That use … is for commercial gain. … The Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.”); ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“The use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”).

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is 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 name, <sodexho-au.com>, be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: August 18, 2021

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