Sodexo v 司娇娇 (Si Jiao Jiao)

WIPO Case No. D2022-0638

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sodexo v. 司娇娇 (Si Jiao Jiao)

Case No. D2022-0638

1. The Parties

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

The Respondent is 司娇娇 (Si Jiao Jiao), China.

2. The Domain Name and Registrar

The disputed domain name <ce-sodexo-ouest.com> (“Domain Name”) is registered with Jiangsu Bangning

Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2022. On February 23, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 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 in English on March 2, 2022.

On February 28, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 2, 2022, the Complainant submitted its 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 Chinese of the Complaint, and the proceedings commenced on March 9, 2022. In accordance with the

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Rules, paragraph 5, the due date for Response was March 29, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2022.

The Center appointed Karen Fong as the sole panelist in this matter on April 5, 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, a French company founded in 1966, specialises in food services and facilities
management. It has 420,000 employees serving 100 million consumers in 64 countries including China. In
2020, its consolidated revenues reached EUR 19.3 billion.

The Complainant’s services are provided under the name “sodexo”. The Complainant’s trade mark registrations for SODEXO include International Registration No. 1240316, registered on October 23, 2014; and International Registration No. 964615, registered on January 8, 2008, which designates many countries including China (the “Trade Mark”).

Based on the available record, the Respondent is an individual based in China. The Domain Name was registered on December 19, 2021. It is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the

Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the

Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain

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name, the language of the proceeding shall be the language of the registration agreement, subject to the
authority of the panel to determine otherwise, having regard to the circumstances of the administrative
proceeding. According to the information received from the Registrar, the language of the Registration

Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- The Domain Name is in Latin script rather than Chinese characters which indicates that the
Respondent is able to understand the English language;

- The Complainant has no knowledge of the Chinese language; and

- Requiring the Complainant to translate the Complaint in Chinese would result in unwarranted delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Panel is also mindful of the need to ensure the proceeding be conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name contains the Trade Mark in its entirety and the addition of the letters “ce” and a hyphen before the Trade Mark and another hyphen and the word “ouest” after the Trade Mark. The letters “ce” stands for “Comitè d’Enterprise” in French, which is English for “Works Council”, and “ouest” means

do not prevent a finding of confusing similarity under the first element, as made clear in section 1.8 of the	“west” in English. The combination of the Trade Mark together with other terms, regardless of their meaning, since the Trade Mark is easily recognizable within the Domain Name.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain, which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

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(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 trade mark 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 trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the Trade Mark or register the Domain Name or any domain names. It would not appear that the Respondent is commonly known by the Domain Name nor does it have any registered trade mark rights to the Domain Name. The fact that the Domain Name resolves to an inactive website is not bona fide or legitimate noncommercial or fair use of the Domain Name. Furthermore, when considering the nature of the Domain Name, the added letters “ce” stands for “Comitè d’Enterprise” in French, which is English for “Works Council”, and “ouest” means “west” in English, and as such, the construction of the Domain Name is such to unfairly imply an association with the Complainant.

prima facie

The Panel finds that the Complainant has made out a case, a case calling for an answer from the of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name particularly since the Trade Mark has no other meaning other than its significance as a trade mark belonging to the Complainant.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

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The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the registration of the Domain Name is in bad faith.

As regards the use of the Domain Name, the fact that the Domain Name resolves to an inactive website does not prevent a finding of bad faith (WIPO Overview 3.0, section 3.3). The Panel has to examine the circumstances of the case to determine whether the Respondent is acting in bad faith. UDRP panels may

draw inferences about whether the domain name was used in bad faith given the circumstances surrounding
registration, and vice versa. In this case, inferences of bad faith use are found in the following factors: (i)
the Domain Name consists of the Complainant’s well-known and fanciful trade mark in its entirety, (ii) the
implausibility of any good-faith use to which the Domain Name may be put, and (iii) and the Respondent has
failed to file a Response.

The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy and that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

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 Domain Name, <ce-sodexo-ouest.com>, be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: May 3, 2022