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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc / Peneloppe Giguere

Case No. D2020-2727

1. The Parties

The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama / Peneloppe Giguere, France.

2. The Domain Name and Registrar

The disputed domain name <bbhotels.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2020. On October 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2020, 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 22, 2020, 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 27, 2020

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, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on November 30, 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

Incorporated in 1990, the Complainant is a French company providing hotel services, restaurants, temporary accommodation, and related booking services via the Internet. The Complainant operates over 470 hotels throughout Europe and Brazil, including some 280 hotels in France. For use in connection with its hotel and hospitality services, the Complainant has registered, inter alia, the following trademarks:

- French Trademark Registration No. 3182311, BBHOTEL, registered on August 29, 2002;
- French Trademark Registration No. 3182312, HOTELBB, registered on August 29, 2002;
- French Trademark Registration No. 3182313, BB-HOTEL, registered on August 29, 2002;
- Semi-figurative French Trademark Registration No. 3394439, B & B HOTELS, registered on November 29, 2005; and
- Semi-figurative European Union Trade Mark Registration No. 004767323, B & B HOTELS, registered on December 12, 2006.

The Complainant is also the registrant of the domain name <hotel-bb.com>, from which it operates a consumer-facing website, as well as a number of other domain names comprising its trademarks.

The disputed domain name was registered using a privacy service on September 30, 2020. The disputed domain name previously resolved to a parking page, displaying sponsored links to goods and services in competition with those offered by the Complainant. At the time that the Complaint was filed, the disputed domain name no longer resolved to an active website.

The disputed domain name was used in order to create an email address, which was in turn used to send emails purporting to originate from the CEO of the Complainant, seeking to place orders with the Complainant’s suppliers.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the trademarks B & B HOTELS, HOTELBB, BB-HOTEL, and BBHOTEL. The Complainant submits that the disputed domain name is confusingly similar to the textual elements of its trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not and has never been known under the name “BB Hotels” or “Group BB Hotels”, nor has the Complainant authorized the Respondent to make use of its trademarks. The Complainant submits that the Respondent is not making any bona fide use of the disputed domain name. Rather, the Respondent has used the disputed domain name to pretend to be the CEO of the Complainant as part of a phishing scheme targeting the Complainant’s suppliers. The Complainant adds that the previous use of the disputed domain name to resolve to a parking page displaying links to goods and services that compete with those offered by the Complainant does not amount to a bona fide use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the registration of the disputed domain name in 2020 was very recent when compared to the registration of the Complainant’s trademarks. The Complainant further asserts that the B & B HOTELS trademark is well known in France and in Europe, having been widely used by the Complainant. The Complainant argues that the Respondent was well aware of the Complainant’s trademark rights when registering the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to impersonate the Complainant’s CEO as part of a phishing scheme. The Complainant submits that the use of the disputed domain name to send phishing emails constitutes an attempt to attract, for commercial gain, or to defraud, Internet users to third-party websites or other online location, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation, or endorsement of those websites or other online locations, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must establish, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

-the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademarks B & B HOTELS, HOTELBB, BB-HOTEL, and BBHOTEL, the registration details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s BBHOTEL trademark in its entirety, simply adding the letter “s”. Similarly, the disputed domain name comprises the textual elements of the Complainant’s semi-figurative trademark B & B HOTELS, altered only by omitting the ampersand and spaces present in the trademark, such elements being incapable of representation per se in a domain name. The Panel finds that such alterations or omissions do not prevent a finding of confusing similarity, where the dominant elements of the Complainant’s trademark are clearly recognizable in the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The generic Top-Level Domain “.net” may be disregarded for the purposes of comparison under the first element, as it is viewed as a standard registration requirement; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There appears to be no relationship between the Complainant and the Respondent. The Complainant has not authorized the Respondent to make use of its trademarks, in a domain name or otherwise.

The Complainant has provided evidence indicating that the disputed domain name has been used to send emails that purport to originate from the Complainant’s CEO. In order to lend an air of legitimacy to the phishing emails sent from an email address using the disputed domain name, the Respondent has included the Complainant’s VAT number as well as the Complainant’s commercial registration number.

The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Rather, the emails referred to above serve as prima facie evidence that the disputed domain name is being used in the furtherance of a fraudulent email scheme, aimed at misleading the Complainant’s suppliers into believing that they were dealing with the Complainant, who in reality has been impersonated by the Respondent. The Panel further notes that the Respondent appears to have provided false or incomplete underlying registrant information, presumably to avoid identification.

Prior UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation, passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

There is no evidence that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor is there any evidence of the Respondent having made any legitimate noncommercial or fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy.

The Respondent’s prior use of the disputed domain name to resolve to a parking page displaying sponsored links does not, in the circumstances of the present case, give rise to any rights or legitimate interests in the disputed domain name.

In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark registrations, the earliest of which dates from 2002, substantially predate the Respondent’s registration of the disputed domain name on September 30, 2020. The Respondent’s knowledge of the Complainant and its trademarks can be readily inferred from the Respondent subsequent use of the disputed domain name as part of a fraudulent email scheme targeting the Complainant’s suppliers. The Panel finds that the Respondent registered the disputed domain name with the view to creating the false impression that the disputed domain name was registered to and under the control of the Complainant, in bad faith.

As noted above, the Respondent appears to have used the disputed domain name in an effort to impersonate the Complainant’s CEO and to send phishing emails to the Complainant’s suppliers. Given that use of a domain name for per se illegal activity such as phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4.

In the circumstances, the Panel finds that the Respondent’s registration of the disputed domain name using a privacy service, while providing what appear to be false or incomplete underlying registrant details, amounts to further evidence of the Respondent’s bad faith; see WIPO Overview 3.0, section 3.6. The fact that the disputed domain name no longer resolves to an active website does not alter the Panel’s findings above.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 name <bbhotels.net> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: December 14, 2020

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