WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B&B Hotels, Société par actions simplifiée v. Anonymous Corp, Ken
Case No. D2011-1864
1. The Parties
The Complainant is B&B Hotels, Société par actions simplifiée of Brest, France, represented by DLA Piper UK LLP, France.
The Respondent is Anonymous Corp, Ken of Macao, China, self represented.
2. The Domain Names and Registrar
The disputed domain names <hôtel-bb.com> and <hôtelbb.com> (“the Disputed Domain Names”) are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2011. On October 31, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Names. On October 31, 2011, Name.com LLC 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 November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Response was filed with the Center on November 29, 2011 but it was not readable. After having notified the Parties of the Commencement of the Panel Appointment Process on December 5, 2011, the Respondent filed a readable version of the Response on December 6, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on December 14, 2011. 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 which was incorporated on May 28, 1990 which offers services of hotels, temporary accommodations and related booking services, including through the Internet. It operates more than 200 hotels, which means around 14,000 rooms, in France and Germany, and is currently opening additional hotels in the European Union, such as in Portugal. More than 1,000 persons work for the Complainant. The Complainant has reached the third position on the French market of budget hotels with a turnover of Euro 215 million in 2011.
The Complainant is the owner of various trademarks including the “BB” and “Hotel” elements (together “the Trademark”), for example:
- French trademark BB-HOTEL No. 02 3 182 313 filed on August 29, 2002 covering hotel services, booking of hotel rooms in class 43;
- French trademark BBHOTEL No. 02 3 182 311 filed on August 29, 2002 covering hotel services, booking of hotel rooms in class 43;
- Semi-figurative European Community trademark B&B HOTELS & logo No. 004767323 filed on November 29, 2005 covering hotel and restaurant services, cafeteria, bars, booking of hotels and temporary accommodations in class 43.
The Complainant owns various domain names containing the elements "BB" and "Hotel" combined (with or without hyphens), including the following domain names: <hotel-bb.com> (registration date: February 18, 1998), <hotel-bb.tm.fr> (registration date: April 8, 1998), <hotel-bb.fr> (registration date: May 25, 2000) and <hotelbb.com> (registration date: November 1, 2001).
According to the available WhoIs information, the Disputed Domain Names were “created” respectively on February 26, 2010 for <hôtel-bb.com> and on September 15, 2011 for <hôtelbb.com>.
The Disputed Domain Name <hôtel-bb.com> redirects to a website listing a series of hotels (which are Complainant’s competitors) located in Boulogne-Billancourt (Paris’s suburb), while the Disputed Domain Name <hôtelbb.com> redirects to a parking website in French, which lists many links redirecting to third party websites. The Disputed Domain Name <hôtelbb.com> is on sale on the website SEDO.
The Complainant was made aware of the registration of the first of the Disputed Domain Names <hôtel-bb.com> when receiving an email from Mr. Ken on September 26, 2011 offering such Disputed Domain Name for sale to the Complainant.
The Complainant subsequently sent a cease and desist letter to the Respondent on October 5, 2011. A representative of the Respondent immediately called the Complainant’s counsel (the discussion took place in French) and confirmed his interest in transferring the Disputed Domain Name <hôtel-bb.com> as well as the other Disputed Domain Name (i.e. <hôtelbb.com>) to the Complainant for a global amount of Euro 3,000. This offer was rejected. The Respondent reiterated its intent to sell the Disputed Domain Names by various emails sent to the Complainant’s counsel.
5. Parties’ Contentions
The Complainant first claims that the Disputed Domain Names are confusingly similar to the Trademark because they consist solely of the Complainant’s famous Trademark with a simple inversion of the elements “bb” and “Hotel”. Having inverted the order of these terms in the Disputed Domain Names does not render them dissimilar given that the combination of these words is distinctive and brings to mind the Complainant’s famous business activities in the hotel field.
The Complainant further alleges that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names because the Respondent is not currently and has never been known under the name BB HOTEL and it is not currently and has never been offering any goods or services under that name; the Complainant has not licensed or authorized the Respondent in any way to use the trademark B&B HOTELS; the Complainant has never allowed the Respondent to register or to use the two Disputed Domain Names; the Respondent has not adduced any evidence of legitimate use of, or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. On the contrary, the evidence and correspondences between the Respondent and the Complainant’s legal representative show that the Respondent’s intention is to sell the Disputed Domain Names to the Complainant for a monetary consideration, or to any other interested parties, and not to use it for a bona fide offering of goods or services.
The fact that the website corresponding to the Disputed Domain Name <hôtel-bb.com> gives a list of hotels located at Boulogne-Billancourt, France, with redirection to corresponding websites is no proof of any legitimate project under that Disputed Domain Name particularly because the Disputed Domain Name <hôtelbb.com> only directs to a parking website, which shows therefore that the Respondent has no bona fide intention to use such Disputed Domain Name.
The Complainant finally holds that the Respondent was aware of the existence of the Complainant's Trademark at the time of registration of the Disputed Domain Names, and therefore registered them in bad faith, particularly because the Trademark is very known (in France and Germany). It is thus not possible to conceive a plausible circumstance in which the Respondent could legitimately use the Disputed Domain Names. The Respondent’s bad faith further results from the fact that the Respondent registered the Disputed Domain Names for the sole purpose of having them sold to the Complainant for a monetary consideration (Euro 3,000) in excess of the Respondent’s out-of-pocket expenses directly related to them. The fact that the Respondent has a record of similar behaviors, i.e. registration of domain names that contain third parties trademarks for the purpose of making money by offering them for sale to their legitimate trademark owner, is a further evidence of the Respondent’s bad faith in the registration and use of the Disputed Domain Names.
The Respondent claims that the Disputed Domain Names were used to offer free information about hotels located in Boulogne-Billancourt whereby the letters “bb” stand for Boulogne-Billancourt.
The Respondent claims that “there is no confusion with the Complainant” because the Disputed Domain Names are different and that it did not intend to do any advertising (as only few people who know the town of Boulogne-Billancourt could connect themselves to the Disputed Domain Names). It further claims that it is free to buy any domain name especially common names such as “Hôtel” and “bb” as referring to “Boulogne Billancourt”.
The Respondent also claims that it offered the Disputed Domain Names for sale to the Complainant for a fee because it never used them in bad faith, but rather used them to inform people about the hotels in its town. Respondent suggested to transfer them for a reasonable amount and to give the money to an association that promotes the hotels in Boulogne-Billancourt.
6. Discussion and Findings
In order to succeed in its complaint, the complainant is required to establish the following elements under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) that the respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights to the Trademark. The Trademark has been registered by the Complainant in different jurisdictions (particularly in France) and has also been used extensively over a long period in France, which is the country where the Respondent has admitted to be focusing in view of its statement that the use of the Disputed Domain Names relates to Boulogne-Billancourt (for “bb”).
The Panel notes that the Disputed Domain Names comprise the two elements composing the Complainant’s Trademark (i.e. “bb” and “Hotel”) to which a circumflex has been added (pursuant to the correct writing in the French language for “Hôtel”) in a reversed order (i.e. “Hotel” and “bb”). The Panel finds that the addition of the circumflex as well as the reversed order of the words do not prevent a finding of confusing similarity between the Trademark and the Disputed Domain Names. See by analogy, BPCE v. PrivacyProtect.org / Maksym Pastukhov, WIPO Case No. D2010-1666.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Names, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names which are confusingly similar to the Trademark owned by the Complainant for use in connection with services which are at least partly identical to those of the Complainant in the hotel business and competing with them. The burden consequently shifts to the Respondent to come forward with evidence of a right or legitimate interest in the Disputed Domain Names. In this case, the Respondent has not brought any credible evidence of such right or legitimate interest in the Disputed Domain Names.
Based on the record, the Respondent has indeed not provided any legitimate evidence of use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services before or after notice of the dispute. Although the Respondent has alleged to be using the Disputed Domain Names for the purpose of providing free information about hotels in Boulogne-Billancourt without intent of financial gain, there is no clear and convincing evidence establishing such activity or any demonstrable preparations to such use. The Panel consequently holds that the fact that the Respondent has alleged to make a non-for-profit use of the Disputed Domain Names cannot suffice in the absence of relevant evidence duly establishing such use. See Royal Caribbean Cruises Ltd. v. Gold Anchor Service and Gold Anchor Standards, WIPO Case No. D2003-0443; see also Intelligent Medical Objects, Inc. v. Domains by Proxy, Inc. / Atif Zafar, WIPO Case No. D2009-1342. The presence of commercial links on the relevant websites associated with the Disputed Domain Names rather prevents a finding of a noncommercial use within the meaning of paragraph 4 (c)(iii) of the Policy. See by analogy, The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.
Moreover, it has been established that the Respondent has offered the Disputed Domain Names for sale to the Complainant at a price (i.e. Euro 3,000) which was considerably higher than the Respondent’s out-of-pocket costs. It further appears that the Disputed Domain Names were used in connection with fee generating domain name parking services, whereby some links pointed to competitors of the Complainant in the hotel industry.
On this basis, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant’s services so that the choice of the Disputed Domain Names which use the distinctive elements of the Trademark cannot be explained otherwise than as a reference to the Trademark owned by the Complainant. The Respondent consequently cannot be followed when arguing that it was free to register the Disputed Domain Names because they would allegedly contain standard words. A finding of bad faith registration can indeed be admitted when it is established that the registrant chose the relevant disputed domain names while having the complainant’s trademark and services in mind at the time of registration, which is the case here. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642.
The Panel agrees with the contention made by the Complainant that the Respondent must have had knowledge of the Complainant’s Trademark when it registered and started using the Disputed Domain Names, whereby the Panel notes that the Respondent did not object that it had knowledge of the Complainant’s and the Complainant’s Trademark at the time of registration of the Disputed Domain Names. As stated above, the explanation made by the Respondent relating to the use of the initials “bb” in the Disputed Domain Names as an alleged reference to the city of Boulogne-Billancourt are unconvincing and cannot prevent the conclusion of the Panel that the Respondent had the Trademark in mind when it registered the Disputed Domain Names. In the absence of any evidence provided by the Respondent legitimizing its use of the Disputed Domain Names and explaining in a convincing manner the choice of the Disputed Domain Names, the Panel cannot conclude otherwise than by stating that the registration and use of the Disputed Domain Names was made in bad faith. See Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122.
The Panel further holds in view of the evidence brought in the proceedings that the Respondent registered the Disputed Domain Names primarily for the purpose of selling the Disputed Domain Names to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Names, whereby the unconvincing explanations given by the Respondent about this cannot affect this finding (the unsubstantiated claim made by the Respondent that the consideration to be obtained for the sale of the Disputed Domain Names would be given to an unidentified third party institution is of no avail in these proceedings).
The Panel finally finds that the Respondent has engaged in a pattern of conduct of having registered various domain names in order to prevent the owners of the relevant trademarks from reflecting them in the corresponding domain names, whereby the Respondent has used various identities for this purpose. See Nestlé Waters France S.A. v. Anonymous Corp, Ken, WIPO Case No. D2011-0714, as well as CELIO France, SAS v. Monsieur Ken Hocini, WIPO Case No. D2010-0444 and Blédina v. Malek Hocini, WIPO Case No. D2010-1216.
On this basis, the Panel holds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) 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 Names <hôtel-bb.com> and <hôtelbb.com> be transferred to the Complainant.
Jacques de Werra
Dated: December 28, 2011