Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.
Respondent is yansheng zhang, GNAME.COM PTE. LTD, Singapore. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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 Complainant on May 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 11, 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 Respondent of the Complaint, and the proceedings commenced on May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. On May 21, 2021, a third party sent an email to the Center regarding notification of the Complaint. On May 26, 2021, the Center sent an email to the Parties regarding the identification of the sender. On May 28, 2021, the third party replied to the Center’s email claiming that it is not the actual owner of the disputed domain name. The purported actual owner of the disputed domain name did not submit any response. Accordingly, the Center notified the commencement of panel appointment process on June 7, 2021. On June 8, 2021, the third party emailed the Center informing that it has informed the actual owner of the disputed domain name of the received email. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on June 29, 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 Complainant is a French company that operates a chain of hotels across Europe and in Brazil under the brand B&B HOTELS. It is the proprietor of numerous 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; Additionally, Complainant has registered numerous domains incorporating its marks, such as The disputed domain name was registered by Respondent on March 3, 2021. It does not currently resolve to an active website. The record contains a copy of Complainant’s contact form to Respondent submitted online through Complainant’s contentions may be summarized as follows: Under the first element, Complainant states that it has been offering hotel, restaurant and related booking services under the famous B&B HOTELS mark since 1990. It operates 470 hotels in various European countries and Brazil, employees 1,000 people, and had an annual turnover of EUR 290 million in 2019. It began registering domain names incorporating its mark in 1998. The disputed domain name is confusingly similar to Complainant’s marks and domains. It is identical to Complainants French trademark HOTELBB and differs from Complainant’s other trademarks in insignificant details. Under the second element, Complainant states that it has not authorized Respondent to use its HOTELBB mark and that there is no evidence that Respondent is known by or is using this mark. The disputed domain name does not resolve to an active website, demonstrating that Respondent has no bona fide intention to use the disputed domain name. Respondent is named in another UDRP case wherein Respondent had also registered a domain name reflecting a third-party trademark. Under the third element, Complainant states that, at the time of registration of the disputed domain name in 2021, Respondent must have been aware of Complainant’s rights. Complainant began using its marks in 1990 and has registered them beginning in 2005. B&B HOTELS is a well-known mark and a famous hotel chain in Europe and in France. Respondent’s sole intent in registering the disputed domain name is attract, for commercial gain, or to defraud Internet users to third party’s web sites or other on-line location, by creating a likelihood of confusion with Complainant's mark. The non-use of the disputed domain name is evidence of bad faith. A previous UDRP panel has found that Respondent acted in bad faith in similar circumstances. Respondent concealed its identity by using a proxy service. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires 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 Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) 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 Complainant has provided evidence establishing that it has trademark rights in the HOTELBB mark through registration inter alia in France. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s HOTELBB and related marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name is identical to Complainant’s HOTELBB mark and is confusingly similar to Complainant’s BBHOTEL and BB-HOTEL marks. It is the consensus view of UDRP panels that, in such cases, Complainant has standing to bring a case because Complainant’s mark is) recognizable within the disputed domain name. See, for example, Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; LinkedIn Corporation v. Daphne Reynolds,WIPO Case No. D2015-1679. It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.net” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. 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, 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) 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. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the HOTELBB mark with the permission of Complainant. The nature of the disputed domain name, which is identical to Complainant’s HOTELBB mark, cannot without some reasonable explanation be said to constitute fair use since, as it stands, it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens,WIPO Case No. D2016-0909; and B&B Hotels v WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna,WIPO Case No. D2020-2837. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case, in particular, the identity and very close proximity of the disputed domain name to Complainant’s marks and Complainant’s domain names (notably in the “.com” extension with and without hyphen) and the lack of evidence of any bona fide activity in connection with the disputed domain name by Respondent, hinder any inference that there can be rights or legitimate interests on the part of Respondent. Accordingly, the Panel finds that Complainant has established the second element under 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. Complainant’s rights in the HOTELBB and related marks predate the registration of the disputed domain name by several decades. The evidence presented supports Complainant’s assertion that its mark has been in broad use over this period of time. Complainant relies on circumstantial evidence to show that Respondent targeted Complainant and the Panel finds that a number of factors indicate that Respondent would indeed have been aware of Complainant. The disputed domain name is identical to Complainant’s domain under the “.com” domain and identical to Complainant’s long-established HOTELBB mark. Respondent concealed its identity using a privacy service, and has engaged in a pattern of conduct by previously registering domain names identical to marks of third parties. See e.g., Sanofi v. Yansheng zhang, GNAME.COM PTE. LTD,WIPO Case No. D2021-1751, and Nokian Tyres plc v. Yansheng Zhang, gname.com Pte. Ltd.,WIPO Case No. D2020-3032. There is no evidence that Respondent, beyond registering the disputed domain name, has engaged in any activity that would provide a reasonable explanation for selecting a domain name identical to Complainant’s mark and passively holding it. On balance, the Panel is persuaded that Respondent registered and used the disputed domain name in bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
- French Trademark No. 3182311 for BBHOTEL (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;
Sole Panelist
Date: July 26, 2021
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