WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sodexo v. suju chen, chensuju
Case No. D2021-2755
1. The Parties
The Complainant is Sodexo, France, represented by Areopage, France.
The Respondent is suju chen, chensuju, China.
2. The Domain Name and Registrar
The disputed domain name <sodexe.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 August 27, 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 September 1, 2021.
On August 27, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On September 1, 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 Japanese of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.
The Center appointed Teruo Kato as the sole panelist in this matter on October 27, 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
According to the Complainant, the Complainant was founded in 1966 and is one of the largest companies in the world specialized in food services and facilities management, with 420,000 employees serving 100 million consumers in 64 countries.
The Complainant owns, inter alia, International trademark SODEXO No. 964615, registered on January 8, 2008, designating multiple jurisdictions including China and Japan, and covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
The disputed domain name <sodexe.com> was registered on July 5, 2021.
The Respondent is suju chen, chensuju, whose address is given as being in China.
According to the Complainant, the Respondent is using the disputed domain name “to divert Internet users to a gambling and pornographic website” with clickable links redirecting users to other sites.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of various trademarks including SODEXO.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s SODEXO trademark.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark SODEXO, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
A. Language of the 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 authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, it would unnecessarily delay the proceedings and the Complainant would incur substantial expenses for translation.
On August 27, 2021, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by September 1, 2021. The Respondent did not respond to this by this deadline nor later.
On September 2, 2021, the Center informed the Respondent that the Center has decided to: “1) accept the Complaint as filed in English; 2) accept a Response in either English or Japanese; 3) appoint a Panel familiar with both languages mentioned above, if available.” Accordingly, the Panel would have accepted a response in Japanese, but no reply was submitted by the Respondent.
The Panel notes that the disputed domain name currently resolves to a page which is written in the Chinese language and that the use of the Japanese language is minimal. The Panel also notes that the Respondent’s address is given as being in China and not in Japan.
In the circumstances, in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of SODEXO registered trademarks, including:
- International trademark SODEXO No. 964615, registered on January 8, 2008, designating multiple jurisdictions including China and Japan, and covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘info’, ‘.com’, ‘.club’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”), the disputed domain name matches the Complainant’s trademark SODEXO, except the last letter “o” has been replaced with the letter “e”. The Complainant contends that “[s]uch a difference corresponds to an obvious misspelling of the SODEXO mark which can be made by an Internet user and is characteristic of typosquatting practice intended to create confusing similarity between Complainant’s mark and Respondent’s domain name.”
As regards “misspelling” and “typosquatting”, section 1.9 of the WIPO Overview 3.0 states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
It further provides that “[e]xamples of such typos include: (i) adjacent keyboard letters; (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters); (iii) the use of different letters that appear similar in different fonts; (iv) the use of non-Latin internationalized or accented characters; (v) the inversion of letters and numbers; or (vi) the addition or interspersion of other terms or numbers.”
In the present case, the Panel is of a view that the substitution of “o” with “e” could be misunderstood by users (especially on a mobile device) and is therefore confusingly similar.
The Complainant also contends that “[t]he word SODEXO is purely fanciful” and that “[d]ue to the almost identity between the disputed domain name <sodexe.com> and the mark SODEXO, the public could undoubtfully believe that this disputed domain name comes from the SODEXO group or is linked to SODEXO.”
In the course of the current proceedings the Respondent was given an opportunity to submit its counter-argument but has not submitted any response.
In the circumstances, the Panel holds that, whilst the disputed domain name does not incorporate the entirety of the trademark, the dominant feature of the Complainant’s trademark is recognizable in the disputed domain name, and that the disputed domain name is confusingly similar to the Complainant’s trademark. (See Paragraph 1.7 of the WIPO Overview 3.1).
Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant contends with relevant evidence that: (i) the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not been commonly known by the disputed domain name; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as contemplated above.
The Panel is satisfied that the Complainant has established prima facie case. By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on that website or location.
In the present case the Panel notes that the trademark SODEXO was registered and extensively used internationally, including in China and Japan, long before the disputed domain name was registered on July 5, 2021. The Panel also notes the contention by the Complainant that “[t]he word SODEXO is purely fanciful”. The Panel holds that the Respondent was most likely to have known of the Complainant, its products, and trademarks prior to registering the disputed domain name and that the Respondent registered the disputed domain name in bad faith.
As to the use in bad faith, the Complainant contends, among others, that “nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with the Complainant.”
As previously raised, the disputed domain name resolves to a website hosting links for gambling and pornography content in Chinese. On this point, prior UDRP panels have repeatedly found that “‘such conduct qualifies as ‘pornosquatting’, which arises when a cyber-squatter tries to take advantage of a well-known trade mark in order to attract Internet users to a pornographic website”. See, International Business Machines Corporation v. Domain Administrator, See PrivacyGuardian.org / Tan Fei Tan, WIPO Case No. D2021-0085, citing Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187. Furthermore, the Respondent presumably receives click-through revenue each time Internet users are misled by the confusingly similar disputed domain name and click on the links hosted thereon.
Further, the relevant webpage does not openly provide any contact information of its administrator. Combined with the fact that no response has been filed by the Respondent and the WhoIs information provided seems to be fake or incomplete, noting that the Center’s communications were reported as undeliverable by the courier, the Panel is of a view that these facts strongly indicate the use in bad faith by the Respondent. (See sections 3.2.1 and 3.6 of the WIPO Overview 3.0).
Taking all matters into careful consideration, the Panel is satisfied that the overall circumstances of the case suggest that the Respondent’s use is in bad faith. The Panel therefore concludes that the third requirement of the Policy has been met.
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 <sodexe.com> be transferred to the Complainant.
Date: October 29, 2021