The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Soro Wonna, Côte d’Ivoire. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 29, 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 November 2, 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 November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2020. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on December 7, 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 The Complainant B&B Hotels is a French company incorporated on May 28, 1990, which since that time has been offering services of hotels, restaurants, temporary accommodation and related booking services, including through Internet to a wide range of customers. The Complainant owns several trademark registrations worldwide, including the following: French trademark registration BB-HOTEL No. 02 3 182 313 filed on August 29, 2002. The services covered by this trademark are hotel services, booking of hotel rooms in class 43. French trademark registration BBHOTEL No. 02 3 182 311 filed on August 29, 2002. The services covered by this trademark are hotel services, booking of hotel rooms in class 43. French trademark registration HOTELBB No. 02 3 182 312 filed on August 29, 2002. The services covered by this trademark are hotel services, booking of hotel rooms in class 43. Semi-figurative French trademark registration B&B HOTELS and logo No. 05 3 394 439 filed on November 29, 2005. This mark is registered in class 43 and protects hotel and restaurant services, cafeteria, bars, booking of hotels and temporary accommodations. Copies of the Certificates of Registration of the above-mentioned trademarks are attached to the Complaint (Annex 7). The Complainant owns several domain names including The disputed domain name The Complainant, B&B Hotels, is a well-known French company that has reached the top position on the French market of budget hotels with a turnover of more than 280 million euros in 2019. The Complainant’s franchisees operate more than 470 of its hotels worldwide, of which more than 280 hotels are operating in France. The renowned name B&B Hotels has been used as a brand, trading name and shop sign since 1990. In essence, the Complainant claims that the disputed domain name is confusingly similar to the service marks mentioned in paragraph 4 above (Factual Background) in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. More specifically, the Complainant has not authorized or licensed the Respondent to use its trademarks or to register or use the disputed domain name. The Respondent is not currently and has never been known under the name “BB Hotels” or “Groupe BB Hotels” and is not currently offering and has never offered any goods or services under that name. The Complainant was made aware of the registration of the disputed domain name Mr. D. is in fact employed by the Complainant in the role of director of purchasing and logistics. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (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 was registered and is being used in bad faith. 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 (Factual Background). 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 For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 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 and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in adomain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant 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 disputed domain name only directs to a parking website which does not constitute evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain name in any manner. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name - which is confusingly similar with the Complainant’s service mark B&B HOTELS and design - but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates to the official site of the Complainant. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” As indicated in paragraph 6.A above, the disputed domain name is confusingly similar with the Complainant’s service mark B&B HOTELS and design and the Respondent is not using the disputed domain name in any way that may be considered fair use. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on October 13, 2020. The Complainant has submitted evidence to support its claim that the trademarks mentioned in paragraph 4 above are widely known and were registered and used many years before the Respondent registered the disputed domain name. Likewise, the Respondent registered the disputed domain name many years after the Complainant registered the domain names The Respondent when registering the disputed domain name on October 13, 2020 has targeted the Complainant’s trademark by adding the non-distinctive word “groupe” to the Complainant’s mark B&B HOTELS and not including the “&” sign (which is normally not included in domain names), with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and service marks for its own monetary benefit. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0). As mentioned above, the name of the Complainant’s Buying Manager is Mr. D. Therefore, the use of the email address “___@groupebbhotels.com” constitutes evidence that the Respondent is using the disputed domain name to fraudulently impersonate the Complainant with the intention to create likelihood of confusion for Internet users with the Complainant and Complaint’s mark as to source, sponsorship, affiliation or endorsement. The Panel 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. 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, Miguel B. O’Farrell
Sole Panelist
Date: December 16, 2020
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