Sodexo v Privacy Protection, Privacy Protection / Shi Lei, Linpingshijidadao

WIPO Case No. D2022-1107

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. Privacy Protection, Privacy Protection / Shi Lei, Linpingshijidadao

Case No. D2022-1107

1. The Parties

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

The Respondent is Privacy Protection, Privacy Protection, United States of America / Shi Lei,

Linpingshijidadao, China.

2. The Domain Names and Registrar

The disputed domain names <sdexorewardhub.com>, <sodeorewardhub.com>, <sodexoreardhub.com>, <sodexorewadhub.com>, <sodexorwardhub.com>, <sodxorewardhub.com>, and <soexorewardhub.com>

are registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2022.

On March 31, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 31, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 1, 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 April 6, 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 the due date for Response was April 28, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 29, 2022.

page 2

The Center appointed Taras Kyslyy as the sole panelist in this matter on May 4, 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.

4. Factual Background

The Complainant is a French company founded in 1966, and specialized in foodservices and facilities management, with 412,000 employees serving 100 million consumers in 56 countries. Since 2008 the Complainant promotes its business under SODEXO trademark owned by the Complainant in a number of

jurisdictions around the world, including, for instance International registration No. 1240316, registered on

October 23, 2014.

The Complainant owns a number of domain names featuring SODEXO trademark, for instance

<sodexo.com> and <sodexorewardhub.com>.

The disputed domain names were registered on March 6, 2022, and resolve to parking webpages with pay-

per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The
disputed domain names are composed of the sign SODEXO associated with the elements “reward” and

“hub”, which are internationally understood by consumers. In the disputed domain names, the words

“sodexo” or “reward” are intentionally misspelled, expecting that the spelling mistakes can be made by

Internet users. These are characteristic of typosquatting practice intended to create confusing similarity

between the Complainant’s trademark and the disputed domain names.

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent was not commonly known by the disputed domain names. 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 names and to use them.

The disputed domain names were registered and are being used in bad faith. The sign SODEXO is purely fanciful, and nobody could legitimately choose this word or any variation thereof (and particularly associated

with the elements “reward hub”), unless seeking to create an association with the Complainant’s trademark

and services. Due to the well known character and reputation of the Complainant’s trademark, the

Respondent knew its existence when he registered the disputed domain names and was also informed

about the Complainant’s activities. The Respondent registered the disputed domain names for the purpose
of creating confusion with the Complainant’s trademark to divert or mislead third parties for the Respondent’s

illegitimate profit. The Respondent is using the disputed domain names to attract Internet users and to incite them to click on PPC links. This is then an intentional attempt to attract, for commercial gain, Internet users

to the Respondent’s competing websites and to other unrelated websites by creating a likelihood of

confusion with the well known trademark of the Complainant. Registrations and uses of the disputed domain

names can harm the goodwill of the Complainant by confusing consumers and interfering with the

Complainant’s business by frustrating attempts by Internet users to reach the Complainant’s official websites.

The Respondent was also involved in the domain disputes Asurion, LLC v. Shi Lei, WIPO Case No.
D2018-2335, and Equifax Inc. v. Shi Lei, WIPO Case No. D2017-1875 with similar factual background.

page 3

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”), the applicable generic Top-Level Domain (“gTLD”) in a domain name

(e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded

under the first element confusing similarity test. Thus, the Panel disregards the gTLD “.com” for the

purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. According to section 1.9 of the WIPO Overview 3.0, 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. In the present case, the disputed domain names

incorporate the entirety of the Complainant’s trademark either in a correct spelling or an intentional

misspelling.

According to section 1.8 of the WIPO Overview 3.0, where 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. In the

present case the Panel finds that the addition of the term “hub”, and also the term “reward” in either correct

or intentionally incorrect spelling does not prevent establishing the confusing similarity of the disputed

domain names to the Complainant’s trademark.

Considering the above, the Panel finds that the disputed domain names are confusingly similar to the

Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

According to section 2.9 of the WIPO Overview 3.0, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on

the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds

this applies to the present case regarding the disputed domain names.

page 4

Noting the risk of implied affiliation between the disputed domain names and the well known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain names could be put that would not have the effect of being considered somehow connected to the Complainant (see, e.g.,

Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, and in the absence of the Respondent’s rebuttal to the Complainant’s prima facie

case, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed

domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.1.4 of the WIPO Overview 3.0, the 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. The Panel is convinced that the Complainant’s trademark is well established

through intensive and widespread use and the Complainant has acquired a significant reputation and level of

goodwill in its trademarks. Thus, the Panel finds that the disputed domain names, which are confusingly

similar to the Complainant’s trademarks, were registered in bad faith.

According to paragraph 4(b)(iv) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet

users to your 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 your website or location or of a product or

service on your website or location. By using the disputed domain names to host PPC parking pages, the

Respondent creates a likelihood of confusion with the Complainant’s trademark and potentially obtains

revenue from this practice. Under such circumstances, the Panel finds that the disputed domain names are
being used in bad faith.

Considering the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 names, <sdexorewardhub.com>, <sodeorewardhub.com>,
<sodexoreardhub.com>, <sodexorewadhub.com>, <sodexorwardhub.com>, <sodxorewardhub.com>, and

<soexorewardhub.com> be transferred to the Complainant.

/Taras Kyslyy/

Taras Kyslyy

Sole Panelist
Date: May 18, 2022