WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B&B Hotels, Société par actions simplifiée v. Daniel Kirchhof

Case No. D2011-1975

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 Daniel Kirchhof, Unister GmbH of Leipzig, Germany.

2. The Domain Names and Registrar

The disputed domain names <aquae-sulis-hotel-b-b.com> <ashburton-hotel-b-b.com> <athena-hotel-b-b.com> <bb-hotel-berlin.com> <bb-hotel-budapest.com> <dover-hotel-b-b.com> <fairway-hotel-b-b.com> <fairway-hotel-bb.com> <fenners-hotel-b-b.com> <hotel-bb-florens.com> <hotel-b-b-it-heechhus.com> <hotel-b-b-kolory.com> <hotel-bb-5-sensi.com> <hotel-du-pillon-b-b.com> <lyncliff-hotel-b-b.com> <marlborough-house-hotel-b-b.com> <marlow-lodge-hotel-b-b.com> <melba-house-hotel-b-b.com> <new-steine-hotel-b-b.com> <northcote-hotel-bb.com> <palm-grove-hotel-bb.com> <regency-hotel-b-b.com> <seven-dials-hotel-b-b.com> <shalimar-hotel-b-b.com> <sherwood-hotel-b-b.com> <staunton-hotel-b-b.com> <the-boundary-hotel-b-b.com> <the-broughton-hotel-b-b.com> <the-george-hotel-b-b.com> <the-hindes-hotel-b-b.com> <tudor-grange-hotel-b-b.com> <victor-hotel-b-b.com> <victor-hotel-bb.com> <wyndham-hotel-b-b.com> are registered with PSI-USA, Inc. dba Domain Robot. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 10, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2011, the Registrar 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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2011.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 16, 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 B&B Hotels, a French company incorporated in May 28, 1990 that has been offering since that date services of hotels, temporary accomodations and related booking services, including through the Internet, to a wide range of customers.

The Complainant mainly operates in France and Germany, where it counts more than 200 hotels and more than 14,000 rooms, including one in Leipzig where the Respondent is located. According to the Complaint, the Complainant has reached the third position on the French market of budget hotels with a turnover of EUR 215 millions in 2011.

The Complainant holds several trademarks, including the following ones:

- Semi-figurative French trademark registration for B&B HOTELS and logo, No. 05 3 394 439 that was filed on November 29, 2005 and registered in class 43 of the Nice Classification (hotel and restaurant services, cafeteria, bars, booking of hotels and temporary accommodations);

- Semi-figurative Community trademark registration for B&B HOTELS and logo, No. 004767323 that was filed on November 29, 2005 and registered in class 43 of the Nice Classification (hotel and restaurant services, cafeteria, bars, booking of hotels and temporary accommodations);

- French trademark registration for BB-HOTEL, No. 02 3 182 313 that was filed on August 29, 2002 and registered in class 43 of the Nice Classification (hotel services, booking of hotel rooms).

- French trademark registration for BBHOTEL No. 02 3 182 311, that was filed on August 29, 2002 and is registered in class 43 of the Nice Classification (hotel services, booking of hotel rooms).

- French trademark registration for HOTELBB No. 02 3 182 312 that was filed on August 29, 2002 and registered in class 43 of the Nice Classification (hotel services, booking of hotel rooms).

Since 1998, the Complainant has also registered numerous domain names consisting of the combination of the terms “bb” and “hotel” with or without any hyphens, either under the format “bb-hotel(s)” or “hotels(s)-bb”.

All disputed domain names referred to above have been registered in 2008 and 2009. While most of them appear to host inactive websites, four of them, namely "<fairway-hotel-bb.com>, <palm-grove-hotel-bb.com>, <northcote-hotel-bb.com> and <victor-hotel-bb.com> are automatically redirected towards the Respondent’s websites such as “www.hotelreservierung.de”, “www.uk.hotelreservation.com”, “www.fr.hotelreservation.com”, “www.nl.hotelreservation.com” or “www.it.hotelreservation.com”. These websites enable users to directly book respectively in “Hotel Le Meridien Fairway” in Dubai, “Palm Grove Hotel – B&B” or “Northcote Hotel B&B”, both located in the Unitd Kingdom of Great Britain and Northern Ireland, as well as “Best Western Hotel Victor Hugo” in Paris.

On March 21, 2011, the Complainant sent a cease and desist letter to the Respondent that, following an oral exchange, resulted in a draft settlement agreement that was sent by the Complainant to the Respondent on June 20, 2011. On June 30, 2011, the Respondent replied to the Complainant that he had refused the settlement agreement.

5. Parties’ Contentions

A. Complainant

The Complainant first argues that the registration of its trademarks creates a prima facie evidence of validity. The figurative elements of its trademarks should be disregarded since these elements cannot be reproduced on the Internet, and that the likelihood of confusion has to be appraised based upon the textual elements of its trademarks. The same goes with regards to the ampersands that are not used on the Internet, as well as the gTLDs that are mere descriptive elements which have to be excluded from such appraisal.

The Complainant asserts that the disputed domain names all contain one of its trademarks to which either a geographical indication is added, such as <bb-hotel-budapest.com> or <bb-hotel-berlin.com>, or the name of a specific hotel, such as <ashburton-hotel-b-b.com>, <wyndham-hotel-b-b.com> or <victor-hotel-bb.com>. As a result, there would be a likelihood of confusion with the Complainant’s trademarks.

The Complainant then contends that the Respondent would not be and would never have been known under the names “bbhotel” or “hotelbb”. The Complainant never granted any license nor authorized the Respondent to register any of the disputed domain names. Absent any evidence brought by the Respondent to that effect, the Complainant considers that the Respondent has no rights or legitimate interests in any of the disputed domain names at stake.

Finally, there is no doubt in the Complainant’s opinion that the Respondent was aware of its trademarks when he registered the disputed domain names, deliberately attempts to take advantage of the Complainant’s famous trademarks respectively, and has no intent to use any of the passive domain names. All these elements would clearly demonstrate that the Respondent has registered and uses the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] 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”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

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

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of word trademarks consisting of the words “hotels” and “bb”. While one may question the distinctiveness of such trademarks with regards to hotel services for which they are registered and their potential descriptiveness, the Panel has no power to appraise the validity of the claimed trademarks, which have been registered and which would appropriately be challenged in the relevant courts. Considering that such has not been the case to the Panel’s knowledge, such registrations have to be considered valid in the limited scope of these proceedings.

This being said, panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358 and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

Such happens to be the case here. The disputed domain names all incorporate BB-HOTEL, BBHOTEL or HOTELBB trademarks in their entirety.

Prior panels have further agreed that the mere addition of a geographical indication has to be considered as descriptive and does not exclude the likelihood of confusion resulting from the incorporation of the Complainant’s trademark in the disputed domain name (Four Seasons Hotels Limited v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-0948; Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661).

The same goes with regards to the adjunction of the name of an existing hotel to the Complainant’s trademarks. Far from excluding users’ confusion, such addition rather increases it, since users may mistakenly believe that the hotels referred to in the disputed domain names are affiliated in a way or the other, which is not the case.

For these reasons, the Panel considers the Policy, paragraph 4(a)(i) to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).

The Complainant asserts that it has never granted any license nor authorized the Respondent to register any of the disputed domain names. Only four out of the thirty-four disputed domain names redirect to active websites, all of which belong to the Respondent to enable users to book hotel rooms. Such absence of any rights or legitimate interests is further evidenced by the fact that the Respondent has been considered to be in bad faith by numerous prior panels (see: Montage Hotels & Resorts, LLC v. Daniel Kirchhof /Unister GmbH, WIPO Case No. D2011-1042; Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-1960; Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 and Lowe Wild Dunes Investors, LP, Commonwealth Washington Operating, Inc., Spruce Peak Realty, LLC, Squaw Creek Associate, LLC, L-O Tempe Hotel, Inc., Long Point Development LLC v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-0311).

The Complainant thus has made a prima facie case showing that the Respondent has no right or legitimate interest in the disputed domain names.

Considering the arguments brought forward by the Complainant, and absent any argument raised by the Respondent to rebut these assertions, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

To have registered the disputed domain names in bad faith, the Respondent first must have been aware of the existence of the Complainant’s trademarks.

In that regard, the Panel first notes that the Complainant has been carrying out its activities under numerous domain names containing the elements “hotel” and “bb” since 1998, and that its verbal trademarks consisting of a combination of these words were registered on August 29, 2002, i.e. prior to the registration of the disputed domain names in 2008 and 2009.

In the present case, there is no doubt in the Panel’s opinion that the Respondent was perfectly aware of the existence of the Complainant’s trademarks when he registered the disputed domain names. The Respondent is active in the same industry, and the Complainant conducts its activities mainly in France and Germany, where it counts more than 200 hotels, including one in Leipzig where the Respondent is located. The Panel finds it hard to believe, not to say impossible, that the Respondent would have selected the disputed domain names at random without being aware of the existence of the Complainant’s trademarks.

In registering the disputed domain names, the Respondent deliberately attempted to attract Internet users to his own websites with regards to the disputed domain names redirecting users to these websites. As to the passive holding of thirty out of the thirty-four disputed domain names, all of them have been recorded by the Respondent on the website “www.sedo.com” where they are currently on sale. Considering the exchange of correspondence between the parties that took place between March and June 2011, the history of the Respondent that has been convicted by prior panels on numerous occasions, and the Respondent’s absence of any argument to try and justify the holding of these different domain names, the Panel considers that these registrations and such usage clearly amount to bad faith taking into account the overall circumstances of the case.

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 <bb-hotel-berlin.com> be transferred to the Complainant. As requested by the Complainant, the Panel orders the following disputed domain names be cancelled:

<aquae-sulis-hotel-b-b.com> <ashburton-hotel-b-b.com> <athena-hotel-b-b.com> <bb-hotel-budapest.com> <dover-hotel-b-b.com> <fairway-hotel-b-b.com> <fairway-hotel-bb.com> <fenners-hotel-b-b.com> <hotel-bb-florens.com> <hotel-b-b-it-heechhus.com> <hotel-b-b-kolory.com> <hotel-bb-5-sensi.com> <hotel-du-pillon-b-b.com> <lyncliff-hotel-b-b.com> <marlborough-house-hotel-b-b.com> <marlow-lodge-hotel-b-b.com> <melba-house-hotel-b-b.com> <new-steine-hotel-b-b.com> <northcote-hotel-bb.com> <palm-grove-hotel-bb.com> <regency-hotel-b-b.com> <seven-dials-hotel-b-b.com> <shalimar-hotel-b-b.com> <sherwood-hotel-b-b.com> <staunton-hotel-b-b.com> <the-boundary-hotel-b-b.com> <the-broughton-hotel-b-b.com> <the-george-hotel-b-b.com> <the-hindes-hotel-b-b.com> <tudor-grange-hotel-b-b.com> <victor-hotel-b-b.com> <victor-hotel-bb.com> <wyndham-hotel-b-b.com>

Philippe Gilliéron
Sole Panelist
Dated: December 27, 2011