Sodexo v Li Jiang

WIPO Case No. D2022-3852

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Li Jiang

Case No. D2022-3852

1. The Parties

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

The Respondent is Li Jiang, China.

2. The Domain Name and Registrar

The disputed domain name <sodexomway.com> is registered with Cosmotown, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2022. On October 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2022, 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 October 17, 2022, 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 on October 17, 2022.

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 of the
Complaint, and the proceedings commenced on October 27, 2022. In accordance with the Rules, paragraph
5, the due date for Response was November 16, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 17, 2022.

The Center appointed Daniel Kraus as the sole panelist in this matter on November 24, 2022. 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.

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4. Factual Background

The Complainant was founded in 1966, and is one of the largest companies in the world specialized in name <sodexo.com> under which the official website of the Complainant is available. The Complainant holds various other domain names incorporating the Complainant’s trademarks. The Complainant advertises and sells its services through its domain name. The disputed domain name was registered on September 1, 2022, and at the time of the Complaint resolved to a parking page with pay-per-click (“PPC”) links connecting to the Complainant’s competitor’s websites for delivery of cooked meals as well as school catering.
foodservices and facilities management, with 412,000 employees serving consumers in 56 countries. The
Complainant was previously called “Sodexho Alliance” but simplified the spelling of its mark and name to
“Sodexo” in 2008. The Complainant owns trademark registrations in various jurisdictions, including the
International trademark SODEXO (Reg. No. 964615, registered on January 8, 2008), the European Union

trademark SODEXO (Reg. No. 008346462, registered on February 1, 2010), and the International trademark

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its strong trademark. The disputed domain name trademarks and the disputed domain name, on the contrary. Besides, the Complainant also fears a possible fraudulent use of the disputed domain name, notably to perpetrate email scam sent to its clients requesting payment of false invoices on fake Sodexo bank accounts; wholly incorporates the SODEXO trademark and the addition of the terms “mway” and the generic Top-Level

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The SODEXO

trademark is not affiliated with the Complainant in any way and the Complainant has never granted any
authorization or license to use the Complainant’s trademark. The Respondent is not commonly known by
the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name was registered and is being used in bad faith. The mere fact that the

Respondent has registered a domain name incorporating the trademark of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain name, the Respondent registered and is using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of

confusion with the Complainant’s trademark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and
(c) of the Policy, the Panel concludes as follows:

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A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the SODEXO and domain name. A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “mway” to the Complainant’s SODEXO trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s SODEXO trademark. The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name. Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s SODEXO trademark and the terms “mway” cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant has registered the SODEXO trademark and the use of the Complainant’s SODEXO trademark cannot be a coincidence. The Complainant operates a mobile application by the name “MyWay by Sodexo” and the term “mway” is similar to the expression “myway”. The Panel is satisfied that the Respondent was aware of the Complainant and its SODEXO trademark when he or she registered the disputed domain name.

The Respondent has registered the disputed domain name to attract Internet users to the websites for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. The list of apparent pay-per-click links to unrelated third-party websites on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to generate click through revenue. By reproducing the Complainant’s SODEXO trademark in the disputed domain name the Respondent is clearly seeking to target the Complainant and its trademark.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of the Policy.

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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 <sodexomway.com> be transferred to the Complainant.

/Daniel Kraus/ Daniel Kraus Sole Panelist Date: December 16, 2022