WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sodexo v. Lee Charles（黄登通）

Case No. D2020-2300

1. The Parties

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

The Respondent is Lee Charles（黄登通）, China.

2. The Domain Name and Registrar

The disputed domain name <sodexo.club> is registered with EJEE Group Holdings Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2020, 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.

On September 8, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 9, 2020, the Complainant confirmed its request that English be the language of the proceeding. On September 8, 2020, the Respondent requested Chinese be the language of the proceeding.

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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. On October 6, 2020, the Respondent sent an informal email to the Center. No formal Response was filed with the Center. On October 6, 2020, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Rachel Tan as the sole panelist in this matter on October 20, 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, 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 logo to logo 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 May 17, 2020, and redirects to a website “www.dan.com/buy-domain/sodexo.club?redirected=true&tld=club” which is offering the disputed domain name for sale. According to the evidence provided by the Complainant, the disputed domain name is being offered for sale at the cost of USD 400.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the SODEXO mark and trade name. Due to the identity of the disputed domain name and the SODEXO mark, the public will obviously believe that the disputed domain name originates from or is linked to the Sodexo group.

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. Due to the well-known character and reputation of the SODEXO and SODEXHO marks, particularly in China where the Respondent is located, it most likely that the Respondent knew of the existence of the marks when the disputed domain name was registered. The term “Sodexo” is purely fanciful, and no one could legitimately choose this term or any variation thereof, unless seeking to create an association with the Complainant. The Respondent’s purpose is very likely to sell the disputed domain name for a profit. The sale or transfer of the disputed domain name is for valuable consideration, in excess of the documented out of pocket expenses directly associated with the disputed domain name. The unauthorized registration of the disputed domain name by the Respondent, is likely to be for fraudulent use and for the purpose of commercial gain, which constitutes bad faith registration and use.

B. Respondent

On September 8, 2020, the Respondent sent an email to the Center indicating that:

a) after checking the disputed domain name, he realized that “Sodexo” did not appear to be an English word;
b) he registered the disputed domain name because the domain names <sodexoclub.com>, <sodexoclub.net>, <sodexoclub.com.my>, <sodexoclub.com.ua> were already registered;
c) if the Complainant could prove that “Sodexo” only has one meaning, then it is a trade mark, and he could transfer the disputed domain name to the Complainant at the registration cost of USD 20.

Further, the Respondent sent an email to the Center after the due date for submitting a response. In this email, the Respondent indicated that in view of the Center, the so-called expert hired by the Center, and the Complainant are all criminal gangs belonging to the same side, he has no reason to waste time taking care of such a criminal organization.

6. Discussion and Findings

6.1. Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11 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 is Chinese. However, the Complainant requested the language of the proceeding be in English on the grounds that:

(a) the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors;

(b) the Complainant is not able to communicate in Chinese and therefore, if the Complainant should submit all documents in Chinese, the proceeding will be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(c) the disputed domain name is registered in Latin script, rather than Chinese characters and it comprises the English word “club”;

(d) the website found at the disputed domain name points to a page in English offering the disputed domain name for sale; and

(e) consequently, the Respondent should have no difficulty to understand if correspondence is exchanged in English in this proceeding.

On the other hand, the Respondent requested the language of the proceeding be in Chinese on the grounds that:

(a) “Sodexo” is not an English word and it has no meaning. The Respondent registered the disputed domain name was because the domain names <sodexoclub.com>, <sodexoclub.net>, <sodexoclub.com.my>, <sodexoclub.com.ua> were already registered;

(b) if the Complainant can prove “Sodexo” only has one meaning, then it is a trade mark, and the Respondent is willing to transfer the disputed domain name to the Complainant at the registration cost of USD 20. The disputed domain name is a premium domain name, and the registration cost is USD 20; and

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 an English word “club” as part of the disputed domain name, and the fact that it redirects to a website in English, indicates some familiarity with the English language;

(d) The Complaint has been submitted in English. The Respondent has chosen not to submit a formal Response in either language. 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 trade mark.

The Panel notes the disputed domain name is comprised of the SODEXO trade mark in its entirety. The positioning of the SODEXO trade mark at the beginning 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, it is permissible for the Panel to disregard the generic Top-Level Domain (“gTLD”) in the disputed domain name, i.e., “.club”. It is accepted by UDRP panels that the practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to “new gTLD”) and the ordinary meaning ascribed to a particular gTLD would not necessarily impact the assessment of the first element. See sections 1.11.1 and 1.11.2 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 trade mark, whereas the Respondent seems to have no trade mark rights, and taking into account the facts and arguments set out above, 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 Respondent has not provided evidence of a legitimate 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 trade mark or register the disputed domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that 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 trade mark has been widely registered around the world. The disputed domain name was registered well after the registration of the Complainant’s SODEXO trade mark. Through extensive use and advertising, the Complainant’s SODEXO trade mark is known throughout France, as well as China where the Respondent is apparently located. 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 trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s SODEXO trade 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 trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name is identical to the SODEXO trade mark save for the gTLD, meaning that bad faith registration of the disputed domain name can be presumed.

In addition, the Panel notes that the disputed domain name redirects to a website where it is being offered for sale for USD 400 which is in excess of the cost for registering the disputed domain name because the Respondent indicated in his email of September 8, 2020 that the registration cost of the disputed domain name was USD 20. This scenario constitutes evidence of bad faith registration and use of the disputed domain name, as provided in paragraph 4(b)(i) of the Policy. See Omega Pharma Innovation & Development NV v. Kyoung S Park, WIPO Case No. D2020-0849.

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 continuing to hold the disputed domain name and offer it for sale, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

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 <sodexo.club> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: November 2, 2020