WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SODEXO v. Zhichao Yang (杨智超)
Case No. D2020-2286
1. The Parties
The Complainant is SODEXO, France, represented by Areopage, France.
The Respondent is Zhichao Yang (杨智超), China.
2. The Domain Names and Registrar
The disputed domain names <mysodexosavigsplan.com>, <mysodexosavingsplans.com>, and <mysodexsavingsplan.com> (the “Domain Names”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 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 September 7, 2020.
On September 4, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 4, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment.
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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020.
The Center appointed Linda Chang as the sole panelist in this matter on October 16, 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 is a French company founded in 1966 and specializes in foodservices and facilities management.
The Complainant has been promoting its business under the mark SODEXO since 2008. The Complainant owns various trademark registrations worldwide for the SODEXO mark including International Registration No. 964615 registered on January 8, 2008, and International Registration No. 1240316 registered on October 23, 2014.
The Domain Names were registered on July 28, 2020. Each is associated with a parking page containing pay-per-click links.
5. Parties’ Contentions
The Complainant contends that the Domain Names compose of the mark SODEXO and English words “my savi(n)gs plan(s)”. As the addition of the descriptive words “my savi(n)gs plan(s)” are not sufficient to distinguish them from the Complainant’s trademark, the Domain Names are confusingly similar to the SODEXO trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names as it has no rights on SODEXO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights. Furthermore, the Respondent does not have affiliation, association, sponsorship or connection with the Complainant and is not commonly known by the Domain Names.
The Complainant finally contends that the Respondent is using the Domain Names to exploit the confusion with the SODEXO trademark to attract Internet users and to incite them to click on commercial links. This is an intentional attempt, for commercial gain, Internet users to Complainant’s competing websites by creating a likelihood of confusion with the SODEXO trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
Though the registration agreement is confirmed in Chinese, the Complainant requested for English to be the language of the proceedings. Its arguments include that the Domain Names are registered in Latin script, comprise certain English words and point to parking pages in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into account all relevant circumstances. It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notices that though the Respondent is located in China, the Domain Names contain certain English words and are resolving to websites in English. The Panel further notices that the Respondent chose not to respond and object to the use of English as the language of the proceedings.
Taking into account all relevant circumstances, the Panel views that using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, and determines the language of the proceedings shall be English and the decision will be rendered in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated clearly that it has registered trademark rights over SODEXO.
“.com” being the generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of comparison of a trademark and a domain name. The Domain Names differ from the SODEXO trademark by the addition of “my”, “savigs” and “plan” in the Domain Name <mysodexosavigsplan.com>, addition of “my”, “savings” and “plans” in the Domain Name <mysodexosavingsplans.com>, and addition of “my”, “savings” and “plan” and deletion of the letter “o” from the SODEXO trademark in the Domain Name <mysodexsavingsplan.com>. The Panel views that both “sodex” and “savigs” are obvious misspellings of the Complainant’s SODEXO trademark and the generic word “savings”.
The misspelled “sodex” and the addition of generic words “my”, “sav(i)ngs” and “plan(s)” does not prevent the confusing similarity between the Domain Names and the Complainant’s SODEXO trademark. The Panel therefore finds that the Domain Names are confusingly similar to the Complainant’s SODEXO trademark.
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made a prima facie case to demonstrate that the Respondent lacks rights or legitimate interests in the Domain Names. As contended by the Complainant, the Respondent is not affiliated with the Complainant. Besides, the Respondent has no rights on SODEXO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights, nor commonly known by the Domain Names prior to the Complainant’s SODEXO trademark.
The Panel further finds that the Respondent’s use of the Domain Names as parking page containing pay-per-click links will not create any legitimate interests on the Respondent nor represent a bona fide offering of goods or services.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In the absence of a Response from the Respondent, the Panel is satisfied that the Respondent most likely knew of the existence of the Complainant’s trademark at the time of registering the Domain Names given the widespread fame of the Complainant and the SODEXO trademark. Besides, the SODEXO trademark is so distinctive that nobody would choose it unless seeking to create a false impression of association with the Complainant. Knowledge of a corresponding trademark at the time of the registration suggests bad faith registration.
Bad faith registration and use is also constituted when the Domain Names resolve to parking pages containing pay-per-click links. Using the Domain Names to host a parking page demonstrates bad faith where such links capitalize on the reputation of the Complainant’s SODEXO trademark.
The Panel additionally notes that the Respondent has been involved in a number of WIPO UDRP cases ordering the Respondent to transfer its registered domain names. The Panel agrees with the Complainant’s contention that this constitutes a contributing bad faith factor in this case.
Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <mysodexosavigsplan.com>, <mysodexosavingsplans.com> and <mysodexsavingsplan.com> be transferred to the Complainant.
Date: October 30, 2020