WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B&B Hotels v. Privacy service provided by Withheld for Privacy ehf / Sophie Terry
Case No. D2021-3268
1. The Parties
The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Sophie Terry, United States of America (“United States” or “US”).
2. The Domain Name and Registrar
The disputed domain name <hotellbb.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 1, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 October 8, 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 on October 12, 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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 22, 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 (société par actions simplifiée) named B&B HOTELS, which was incorporated on May 28, 1990. The Complainant operates a hotel chain under the B&B HOTELS mark with more than 500 hotels worldwide across Europe and Brazil, employing some 1,000 people. The Complainant has registered multiple domain names from and after 1998 containing the elements “bb” and “hotel” including <hotelbb.com> and <hotel-bb.com>.
The Complainant owns a variety of registered trademarks incorporating the same elements, including for example, French Registered Trademark no. 3182312 for the word mark HOTELBB, registered on August 29, 2002, in respect of services in Class 43 (budget hotels, reservation of rooms for travelers).
The disputed domain name was registered on July 23, 2021. Little is known regarding the Respondent, which has not participated in this proceeding. According to a screenshot included in the Complaint, the website associated with the disputed domain name timed out and did not display a page.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant owns several relevant trademark registrations worldwide. These are prima facie evidence of validity, creating a rebuttable presumption that they are inherently distinctive. The Complainant also owns the commercial name B&B HOTELS, registered and used since 1990 and several relevant domain names, dating from 1998 at the earliest, which all redirect to the Complainant’s main corporate website at which the Complainant’s hotel, restaurant and reservation services are offered. The Complainant has been successful in previous cases under the Policy. The assessment of confusing similarity may be made between the alphanumeric components of the disputed domain name and the Complainant’s mark without including the generic Top-Level Domain (“gTLD”) “.net”. The disputed domain name is almost strictly identical to the Complainant’s French Registered Trademark no. 3182312 for the word mark HOTELBB with only the repetition of a second “l”. The addition of such letter does not change the visual, phonetic and conceptual aspect, and is likely to generate risk of confusion in the public mind. Such an addition of a single letter to a mark is typical of “typosquatting” behavior. The incorporation of the Complainant’s mark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar to said mark.
Rights or legitimate interests
The disputed domain name is not exploited and does not direct to any website. The Respondent has never been known under the name “hotellbb” and has never offered goods or services under that name. No website or specific mention of the Respondent’s activity is found on Google when making a relevant search. Such searches, on the contrary, show the Complainant’s websites and business activities. The Complainant has not licensed or authorized the Respondent to use its trademarks or to register the disputed domain name. The Respondent has not adduced evidence of legitimate use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The associated website is inactive, demonstrating a lack of legitimate users and no bona fide intention to use it. The Respondent’s knowledge of its fraudulent actions is established by the fact that it exactly reproduces the Complainant’s prior rights.
Registered and used in bad faith
The Respondent was aware of the existence of the Complainant’s marks at the time of registration of the disputed domain name because this is much later than the date of registration of the Complainant’s trademarks and the date on which it began using the relevant mark. The Complainant’s B&B HOTELS trademark is a famous mark in France, and such fame cannot be ignored. The Respondent’s sole intention is an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is clear evidence of bad faith. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name, or of a plausible situation in which the Respondent would have been unaware of this at the time of registration. The Respondent has had no intent to publish any serious content online via the disputed domain name. Customers can be attracted to the Respondent’s site when trying to reach the Complainant’s famous domain names and websites considering the identity or high degree of similarity between the Complainant’s marks and the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element inquiry under the Policy, which functions primarily as a standing requirement, is conducted in two steps. First, the Panel considers whether the Complainant has UDRP-relevant rights in a trademark. Secondly, the trademark is compared to the disputed domain name, usually on a straightforward side-by-side basis, and typically disregarding the TLD (in this case, “.net”) as being required for technical reasons only. The purpose of the comparison is to identify whether the trademark is recognizable in the disputed domain name.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its registered trademark for the mark HOTELBB as described in the factual background section above, among others. Comparing this mark to the Second-Level of the disputed domain name, it may be seen that these are identical, with the exception of the fact that an additional letter “l” has been added to the disputed domain name before the letters “bb”. In light of the Complainant’s submissions, and in the absence of any comment from the Respondent, the Panel finds this to be an intentional misspelling of the Complainant’s mark, particularly given that the additional letter “l” is particularly difficult to identify on a screen and in multiple typefaces. Such an intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainant submits that the disputed domain name has not been used, that the Respondent has never been known under the name “hotellbb”, that the Complainant has not authorized the Respondent to use its trademarks and that there is no evidence of activity on the part of the Respondent which would be consistent with paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Panel is satisfied that these submissions are sufficient to establish the requisite prima facie case. The burden of production therefore shifts to the Respondent to bring forward evidence of rights or legitimate interests in the disputed domain name.
The Respondent has not engaged with the administrative proceeding, and it has not provided any submissions or evidence which might have supported a claim in respect of rights or legitimate interests in the disputed domain name. The Panel has not been able to determine any likely rights or legitimate interests which the Respondent might have claimed had it otherwise participated. In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly that the Complainant has carried its burden in respect of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
On this topic, the Complainant’s case raises the reasonable inference that the Respondent would have had knowledge of the Complainant’s rights and the requisite intent to target these at the point when it registered the disputed domain name. The evidence supports the Complainant’s contention that its HOTELBB mark has been used for a considerable period of time, along with the Complainant’s B&B HOTELS mark, in connection with a significant hotel business with both online and offline components. There is no reason to believe that the Respondent would have been unaware of the Complainant’s mark, particularly given the Complainant’s substantial online presence.
The disputed domain name appears to be a typographical variant of the Complainant’s HOTELBB mark which seems calculated to confuse Internet users as to source, sponsorship, affiliation, or endorsement of the Respondent’s website, or indeed to gain Internet traffic intended for the Complainant based upon Internet users inadvertently typing an additional letter “l” in the middle of the Complainant’s mark. Alternatively, the additional “l” may have been selected because it is difficult to distinguish from the Complainant’s mark, for example in an email address. In these circumstances, the Panel agrees with the Complainant that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. The fact that the disputed domain name is passively held at present does not, of itself, prevent a finding of registration and use in bad faith (see section 3.3 of the WIPO Overview 3.0).
The Respondent has not taken up the opportunity to address the Complainant's contentions on this topic. Accordingly, it has not sought to explain the intent behind its registration and use of the disputed domain name, and has not described any alleged good faith motivation which it might have claimed. The fact that it has decided not to participate in the administrative proceeding in the face of the Complainant’s contentions can be regarded as an indicator of registration and use in bad faith (see, for example, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007).
The Panel also notes that the Respondent has chosen to conceal its identity behind a privacy service. While there are legitimate reasons why an individual might use such a service, the Panel finds it more probable in light of the apparent typosquatting involved in the registration and use of the disputed domain name that the Respondent’s selection of a privacy service to conceal its identity, in the circumstances of the present case, formed part of an attempt to delay or to prevent the Complainant from protecting its trademark against cybersquatting. Accordingly, this constitutes a further indicator of registration and use in bad faith.
In light of the above discussion, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the Complainant has carried its burden with regard to paragraph 4(a)(iii) 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 name <hotellbb.net> be transferred to the Complainant.
Andrew D. S. Lothian
Date: January 5, 2022