WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VUR Village Trading No.1 Limited t/a Village Hotels v. Bernadette Zakhm Selim Abou

Case No. DEU2019-0002

1. The Parties

The Complainant is VUR Village Trading No.1 Limited t/a Village Hotels of Warrington, United Kingdom (“UK”), represented by DWF LLP, UK.

The Respondent is Bernadette Zakhm Selim Abou of Paris, France.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <village-hotels.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is D-Cube Resource.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2019. On February 26, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 27, 2019, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2019. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2019.

The Center appointed Marilena Comanescu as the sole panelist in this matter on April 23, 2019. 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 ADR Rules, Paragraph B(5).

The language of the proceeding is English.

4. Factual Background

The Complainant, established in 1995, operates a hotel business comprising 30 hotels in the UK, with total turnover of approximately GBP 195,000,000 at the end of 2017.

The Complainant is the proprietor of the European Union Trademark Registration No. 014764781 for VILLAGE HOTELS (word mark) filed on November 5, 2015, registered on March 9, 2016, and protected until November 5, 2025 for services in classes 41, 43, 44.

Also, the Complainant is promoting its services on its website available at “www.village-hotels.co.uk”.

On September 27, 2018, prior to commencing the present proceeding, the Complainant sent a Cease and Desist letter to the Respondent asking to voluntarily transfer the disputed domain name to it. The Respondent had no reaction.

The disputed domain name was registered on January 12, 2018, and at the time of drafting the Decision, it resolved to a parking page website with sponsored links.

The Respondent was involved in prior domain name disputes under the ADR Rules, decided against it. See, for example, Instagram, LLC v. Bernadette Zakhm Selim Abou, WIPO Case No. DEU2018-0021.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark VILLAGE HOTELS, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered or is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:

A. that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or Community law; and either

B. that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or

C. that the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) states that “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1)”.

Article 10(1) of the Regulation refers to, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names (…)”.

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law”.

The Complainant holds European Union Trademark Registration for the word mark VILLAGE HOTELS.

The disputed domain name incorporates the Complainant’s trademark VILLAGE HOTELS in its entirety with a hyphen separating the two words comprised in the mark.

It is well established in decisions under the ADR Rules that the country code Top-Level Domain “.eu” may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

The Panel therefore finds that the Complainant’s trademark VILLAGE HOTELS is virtually identical to the disputed domain name <village-hotels.eu> as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent (including any potential evidence of rights or legitimate interests) is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.

The Complainant contends that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or register in a domain name the VILLAGE HOTELS trademark, that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it without the intent for a commercial gain. Rather, the disputed domain name is used for a parking page with pay-per-click links and the Respondent chose not to respond to the present proceeding and previous letter sent by the Complainant. Thus, the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name.

If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Panel could not find any evidence for the examples described in Paragraph B(11)(e) of the ADR Rules that (i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so; (ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that (iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.

The disputed domain name <village-hotels.eu> incorporates the Complainant’s trademark VILLAGE HOTELS in its entirety. The Complainant’s trademark is protected and used in relation to hotel services promoted through the website “www.village-hotels.co.uk”. Furthermore, the Respondent was involved in at least one prior domain name dispute cases under the ADR Rules where the panels found against the Respondent.

For all the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name as provided under Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (a) lack of rights or legitimate interests and (b) registration or use in bad faith are alternative requirements. For reasons explained above under Section 6B, the Panel considers that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to separately address the bad faith element.

In any case, the Panel finds that the Respondent’s actions described above are evidence of bad faith as provided under Paragraph B(11)(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <village-hotels.eu> be transferred to the Complainant1 .

Marilena Comanescu
Sole Panelist
Date: May 10, 2019


1 The remedy sought is transfer of the disputed domain name to the Complainant. As the Complainant is established and located within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.