WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. Yang Zhichao (杨智超)
Case No. D2021-0902
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is Yang Zhichao (杨智超), China.
2. The Domain Name and Registrar
The disputed domain name <sodexorewardshub.com> is registered with 22net, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 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 March 29, 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 April 2, 2021.
On March 29, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 31, 2021, 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on May 5, 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, Sodexo, is a French limited company specializing in food services and facilities management, with 470,000 employees serving 100 million consumers in 67 countries. Its consolidated revenue reached EUR 22 billion for the fiscal year 2019.
The Complainant promoted its business under the SODEXHO trade mark and trade name from 1966 to 2008. It simplified the spelling of SODEXHO to SODEXO and changed its logo from to in 2008. The SODEXHO and SODEXO marks are used on a range of daily life on-site services, benefits and rewards services as well as personal and home services. The Complainant owns a range of trade mark registrations for its SODEXHO and SODEXO marks worldwide, including the relevant International Registration No. 964615 SODEXO registered on January 8, 2008 which, inter alia, designates China in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; International Registration No. 689106 SODEXHO registered on January 28, 1998 which, inter alia, designates China in classes 16, 36, 37, 39, 41, and 42; and International Registration No. 694302 SODEXHO registered on June 22, 1998 which, inter alia, designates China in class 9.
The Complainant is also the owner of a range of domain names incorporating the SODEXHO and SODEXO marks, including <sodexo.com>, <uk.sodexo.com>, <sodexoprestige.co.uk>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com>, <cn.sodexo.com>, <sodexho.fr>, <sodexho.com>, etc.
The disputed domain name was registered on July 29, 2015 and at the date of this decision, resolves to a parked page in English comprising pay-per-click advertising links that divert Internet users to various websites relating to different contents such as online pay slips and wage slips services. According to the evidence provided by the Complainant, the disputed domain name previously resolved to a parked page in English and French comprising pay-per-click advertising links that divert Internet users to various other websites relating to workplace meals and meal vouchers, etc.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is composed of the SODEXO mark and the elements “rewards” and “hub”. The SODEXO mark keeps its individuality in the disputed domain name and is clearly perceived by consumers as the predominant part of the disputed domain name. The addition of the descriptive words “rewards” and “hub” in the disputed domain name is not sufficient to distinguish it from the Complainant’s marks. On the contrary, the risk of confusion or association with the mark SODEXO is stronger as the SODEXO mark is precisely used by the Complainant for benefits and rewards services. In particular, the Complainant uses the domain name <sodexorewardhub.com> to propose its benefits and rewards services called “Reward Hub”. Due to the identical reproduction of the SODEXO mark, the public will believe that the disputed domain name comes from the SODEXO group or is linked to SODEXO in so far as it specifically renders services specialized in employee benefits.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name as it has no rights in SODEXO as corporate name, trade name, shop sign, mark or domain name that precede the Complainant’s rights. The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the SODEXO or SODEXHO corporate name, business name and mark. 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 or use the disputed domain name.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The term “sodexo” is purely fanciful, and no one could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant. Due to the well-known character and reputation of the SODEXO and SODEXHO marks, the Respondent undoubtfully knew its existence when he registered the disputed domain name and was also informed about the Complainant’s activities. By using the disputed domain name to attract Internet users and to incite them to click on third party commercial links, the Respondent has an intentional attempt to attract, for illegitimate commercial gain, Internet users to the Complainant’s competing websites and to other unrelated websites by creating a likelihood of confusion with the well-known SODEXO mark. Further, the Complainant points out that the Respondent was involved in many cases having ordered the transfer of the domain names he registered which were reproducing marks owned by third parties and by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) the Complainant is not able to communicate in Chinese and therefore, if the Complainant should submit all documents in Chinese, the proceedings will be unduly delayed and the Complainant would have to incur substantial expenses for translation;
(b) the disputed domain name is registered in Latin script, rather than Chinese characters;
(c) the disputed domain name is composed of the English words “rewards” and “hub”; and
(d) the disputed domain name points to a parking page in French and in English.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.
(a) The Complainant is a company based in France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of Roman letters combined with English words for the disputed domain name, and the English content of the webpage under the disputed domain name, indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.
The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the SODEXO mark.
The Panel notes the disputed domain name is comprised of the SODEXO mark in its entirety. The positioning of the SODEXO mark in front of the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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 section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the additional words “rewards” and “hub” do not preclude a finding of confusing similarity between the SODEXO mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other terms that describe or refer to part of the complainant’s business in the domain name does not eliminate the confusing similarity of the domain name from the complainant’s trade mark under the first element of the Policy. As the words “rewards” and “hub” are referential to the Complainant’s benefits and rewards services, these additional words do not eliminate the similarity between the disputed domain name and the Complainant’s SODEXO mark. See section 1.8 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the SODEXO mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The disputed domain name resolves to parked pages comprising pay-per-click advertising links that divert consumers from the Complainant’s website. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “sodexo”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s SODEXO mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s SODEXO mark had been registered well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s SODEXO mark is known throughout the world. Moreover, the term “sodexo” is not merely a name. Search results using the key word “sodexo” on the Baidu and Google search engines direct Internet users to the Complainant and its services, which indicates that an exclusive connection between the SODEXO mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s SODEXO mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “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 trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous SODEXO mark plus the descriptive words “rewards” and “hub” that are related to the Complainant’s benefits and rewards services, thus, creating a presumption of bad faith.
Section 3.5 of the WIPO Overview 3.0 states that “[p]articularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests)”. The Panel notes that the disputed domain name resolves to parked pages comprising pay-per-click advertising links that divert Internet users to various online pay slips and wage slips services. The Panel finds the use of the confusingly similar disputed domain name to lure Internet users to websites hosting links to providers of competing services is evidence of bad faith. See Sodexo v. 杨智超 (Zhi Chao Yang), WIPO Case No. D2020-1171.
In addition, the Panel notes that the Respondent appears to be engaged in a pattern of abusive registration having registered other domain names comprising of the Complainant’s SODEXO trade mark and other third parties’ trade marks. See SODEXO v. Zhichao Yang (杨智超), WIPO Case No. D2020-2286; Sanofi and Sanofi Biotechnology v. 杨智超 (Zhichao Yang), WIPO Case No. D2020-2560.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 disputed domain name <sodexorewardshub.com> be transferred to the Complainant.
Date: May 17, 2021