filed on January 8, 2008, and IR trademark No. 689106 filed on January 28, 1998.The Complainant is Sodexo of Issy-Les-Moulineaux, France, represented by Areopage, France.
The Respondent is Li Li of Beijing, China.
The disputed domain name <promocaosodexos.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2015.
The Center appointed Nuno Cruz as the sole panelist in this matter on July 28, 2015. 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.
The Complainant Sodexo (prior called Sodexho Alliance) is a French company founded in 1966. It is one of the largest food services and facilities management companies in the world and the 18th largest employer worldwide.
The Complainant promotes its activities among others under the domain names <sodexo.com>, <uk.sodexo.com>, <sodexo.fr>, <sodexoca.com>, <sodexousa.com> and <cn.sodexo.com>.
The Complainant is the owner of numerous trademark registrations in respect of the marks SODEXO and SODEXHO in many countries of the world, including China, for a range of goods and services including IR trademark No. 964615 filed on January 8, 2008, and IR trademark No. 689106 filed on January 28, 1998.
The marks SODEXHO / SODEXO have a great reputation and are widely known all over the world (see Sodexho Alliance v.13 page 3 LaPorte Holdings, Inc., WIPO Case No. D2005-0287, at paragraph 6.27 wherein the panel stated that “Thetrademark SODEXHO and SODEXHO PASS are well-known all over the world and Respondent obviouslyknew this famous trademark and Complainant’s business”.).
The disputed domain name <promocaosodexos.com> was registered on June 3, 2015 with the Registrar and the registrant of the disputed domain name is Li Li, with an address in Beijing, China.
According to the Complainant, on June 3, 2015 the disputed domain name was used to direct Internet users to the website at “www.ss6786.com”, the English title of which was “I love you” with a pornographic picture.
A Google search for elements of the registrant data from the WhoIs records has detected several domain name registrations composed of famous marks, which were already the subject of the following WIPO UDRP decisions:
Aktiebolaget Electrolux v. li li – WIPO Case No. D2013-0086;
Product Partners, LLC v. li li - WIPO Case No. D2010-1615;
Lacoste Alligator S.A. v. Zhang Jian, chen jianjie, Zheng Hao, Tian Ya, Li Da Mao Yi, Chen Liang, Xue Dong, xixi, Afgsd, Haosu, Yuchi, li li, Lan Tian, MeryGoce, IbryCare, China - WIPO Case No. D2012-0402;
Caterpillar Inc. v. zhang zhicai and li li - WIPO Case No. D2012-1849.
From the evidence provided by the Complainant, on the date of filing of the Complaint it appeared that the disputed domain name <promocaosodexos.com> did not resolve to an active website.
However, on the date of the present decision the disputed domain name <promocaosodexos.com> resolves to the website at “www.9789m.com” which, according to a translation provided by the Google search engine, relates to online gambling and betting.
Firstly, the Complainant asserts that the trademarks SODEXHO / SODEXO have been recognized as well-known in a number of previous UDRP cases.
The Complainant states that the disputed domain name <promocaosodexos.com> identically reproduces the mark SODEXO and quite identically reproduces the other mark SODEXHO in which the Complainant has rights with the addition of the Portuguese descriptive word “promocao” meaning “promotion” and the final letter “s”.
According to the Complainant, the Respondent has no rights or legitimate interests in the dispute domain name <promocaosodexos.com> as it has no rights in SODEXHO and SODEXO as corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant’s rights.
Moreover, the Complainant contends that 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 name and to use it.
The Complainant asserts that due to the well-known character and reputation of the SODEXHO / SODEXO mark, it is hardly likely that the Respondent registered the disputed domain name <promocaosodexos.com> without being aware of the existence of the mark SODEXHO / SODEXO.
The Complainant also states that the unauthorized use and registration of the disputed domain name <promocaosodexos.com> by the Respondent to attract and redirect Internet users to a pornographic website as well as the current passive holding of the disputed domain name are solely for the purpose of achieving commercial gain and then constitute bad faith registration and use.
Finally the Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
The Panel finds that the Complainant has established that it is the owner of registrations for the trademarks SODEXO and SODEXHO around the world, including in China.
The Complainant is also the owner, in particular, of the domain names <sodexo.com> and <cn.sodexo.com>.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s SODEXO mark.
It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
In the present case, the disputed domain name incorporates, as its distinctive element, the Complainant’s trademark SODEXO. The only difference between the disputed domain name and the Complainant’s SODEXO trademark lies in the mere addition by the Respondent of the letter “s” in the final part and the addition of the Portuguese descriptive term “promocao” (which means promotion in English).
Furthermore, the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing function for purposes of the Policy (See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112 and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085).
In view of all this, the Panel finds that the disputed domain name <promocaosodexos.com> registered by the Respondent is confusingly similar to the Complainant’s trademark SODEXO, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through wide-spread registration around the world and use in commerce for several years prior to the registration of the disputed domain name.
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.).
By not submitting a response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case that it lacks rights or legitimate interests.
The Panel finds that the Respondent has no rights to use the Complainant’s trademark and is not an authorized agent or licensee of the Complainant’s services or trademarks. There is no evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent’s use of the disputed domain name to attract consumers to other web pages 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 (See CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give rise to rights or legitimate interests)).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
As concluded above, the Complainant’s trademarks SODEXHO and SODEXO are well protected and well known in numerous countries in the world.
The disputed domain name reproduces as its distinctive element the Complainant’s trademark SODEXO, having merely added the letter “s” at the end.
In the absence of a response from the Respondent, this Panel concludes that the Respondent has taken advantage of the well-known character of the trademark SODEXO of the Complainant to attract consumers to a website which redirects them automatically to other websites of financial interest to the Respondent containing namely gambling contents, thus enabling the Respondent to earn revenues by attracting users to its website (See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirectweb users away from a Complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’strademark in the disputed domain name combined with the content featured on the domain name exhibitsintent to deceive consumers into believing that the domain name is somehow associated with, affiliated with,and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a riskof consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwiseapproved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and<swarovski.net> domain names”)).
This fact further contributes to tarnish the image of the Complainant and jeopardise the reputation of its trademark.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within 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 <promocaosodexos.com> be transferred to the Complainant.
Nuno Cruz
Sole Panelist
Date: August 11, 2015