WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B&B Hotels v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Anthony Thomas-Chambers, 1962

Case No. D2021-2511

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, United States of America (“United States”) / Anthony Thomas-Chambers, 1962, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <hotel-bandb.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2021, 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 August 6, 2021 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 August 10, 2021.

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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 27, 2021. 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 that operates a chain of hotels under the brand B&B HOTELS since 1990.

The Complainant is the proprietor of several trademark registrations, including the following:

- European Union Trademark No. 004767323 for B&B HOTELS (device mark), registered on December 12, 2006, for services in class 43;
- French Trademark No. 3182313 for BB-HOTEL (word mark), registered on August 29, 2002, for services in class 43;
- French Trademark No. 3182312 for HOTELBB (word mark), registered on August 29, 2002, for services in class 43.

Additionally, the Complainant has registered numerous domains incorporating its marks, such as <hotel-bb.com> (registered on February 18, 1998), <hotelbb.com> (registered on November 1, 2001) and <hotelbb.eu> (registered on July 7, 2011).

The disputed domain name was registered on December 12, 2020. The disputed domain name resolves to a website containing pay per click links.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the disputed domain name <hotel-bandb.com> is confusingly similar or identical to the Complainant’s trademark with the only adjunction of the “.com” extension.

Thus, the disputed domain name creates confusion with the Complainant’s trademark.

Rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Since the Complainant has not conferred any authorization to use, under any form, the Complainant’s trademark or to register and use the disputed domain name.

The disputed domain name is exploited for a parking page directing to websites related to hotels and is not exploited for a real business.

The Respondent is currently not and has never been known under the name HOTEL BANDB.

The Complainant quotes a Nominet decision against the Respondent where it was held that a similar domain name was registered in bad faith.

Consequently, the Respondent cannot claim, in good faith, to have any legitimate interests in the disputed domain name.

Registration and use in bad faith.

The dates of registration of the disputed domain name which is later in date compared to the date of registrations of the Complainant’s trademarks evidence that the Respondent was aware of the existence of the Complainant’s trademarks.

The Complainant’s trademark is a well know trademarks for hotels.

The Complainant alleges that the Respondent has no affiliation with the Complainant or its trademarks.

The Complainant further states that the registration of a domain name that is confusingly similar or identical to a famous trademark is itself sufficient evidence of bad faith registration and use.

The Respondent offered to sell the disputed domain name to the Complainant for GBP 1,500. The Complainant states that this is not the first attempt to oversale a domain name since the Respondent proposed to sell its former domain name “hotelbandb.co.uk” for the price of GBP 1.8 million.

Thus, the registration and use of the disputed domain name is in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the service marks mentioned in paragraph 4 above.

Based on the evidence submitted, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark B&B HOTELS.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the service mark B&B HOTELS to assess whether the mark is recognizable within the disputed domain name. The Panel finds that the disputed domain name is confusingly similar with the service mark B&B HOTELS and design in which the Complainant has rights. In this particular case, reversing the words in the Complainant’s trademark will not preclude a finding of confusing similarity ( WIPO Case No. D2012-0316, The State of Florida, Department of the Lottery v. Valhalla Properties SA / Kattia Rodriguez Chacon, WIPO Case No. D2005-1342, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Hoslding N.V.).

The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark in the disputed domain name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the disputed domain name. In addition, the Respondent is not known by the disputed domain name.

The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name.

Moreover, the Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel is satisfied that the Respondent would have been aware of the Complainant’s trademarks when he registered the disputed domain name on December 12, 2020.

The Complainant has submitted evidence to support its claim that the trademarks are widely known in the hotel business and were registered and used many years before the Respondent registered the disputed domain name. In addition, the disputed domain name <hotel-bandb.com> is very similar to the domain <hotelbandb.co.uk> that the Respondent registered in the United Kingdom. A decision rendered by the Nominet UK Dispute Resolution Service on June 28, 2021 held that such domain name was registered in bad faith (see Nominet, case D00023678, decision of 28/06/2021, B&B Hotels v. Mr Anthony Thomas-Chambers). The Panelist takes this fact as evidence of knowledge of the Complainant trademark.

With respect to use in bad faith, the evidence shows that the Respondent also requested the Complainant representative the amount of GBP 1,500 to transfer the disputed domain name by email dated July 27, 2021. The Panelist also notes the fact that in the Nominet UK Dispute Resolution proceedings, the Respondent requested to transfer the domain name <hotelbandb.co.uk> for the amount of GBP 1.8 million to the Complainant. These assertions had not been denied by the Respondent.

The Panelist is of the view that such a request is evidence of bad faith according to Paragraph 4(b)(i) of the Policy.

The Panel also finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the disputed domain name.

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 <hotel-bandb.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 11, 2021