ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION B&B Hotels v. Catech-dd-truest, CA tech-dd trust.LCD Case No. D2024-3977 1. The Parties Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France. Respondent is Catech-dd-truest, CA tech-dd trust.LCD, Canada. 2. The Domain Name and Registrar The disputed domain name
is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2024, 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 October 1, 2024, 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 October 4, 2024. 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 October 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 28, 2024.
page 2 The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 31, 2024. 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 company organized under the laws of France that is active in the hotel and restaurant industry. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand B&B HOTELS, inter alia, but not limited to the following: - word mark BB-HOTEL, Institut National de la Propriété Industrielle France (“INPI”), registration number: 3182313, registration date: August 29, 2002, status: active; - word-/device mark B&B HOTELS, European Union Intellectual Property Office (“EUIPO”), registration number: 004767323, registration date: December 12, 2006, status: active; and - word-/device mark B&B HOTELS, United Kingdom Intellectual Property Office (“UK IPO”), registration number: UK00904767323, registration date: December 12, 2006, status: active. Moreover, Complainant has evidenced to own several domain names relating to its BB-HOTEL and B&B HOTELS trademarks, inter alia, since 2004 the domain name , which resolves to Complainant’s official website at “www.hotel-bb.com”, promoting Complainant’s services in the hotel and restaurant industry. Respondent, according to the disclosed WhoIs information for the disputed domain name, is located in Canada. The disputed domain name was registered on July 20, 2024. By the time of rendering this decision, the disputed domain name does not resolve to any active content on the Internet. Complainant, however, has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a website which purported to offer online job opportunities with Complainant without any authorization to do so, thereby prominently displaying Complainant’s official B&B HOTELS logo; as evidenced by an Internet user that contacted Complainant via email on September 13, 2024, those job opportunities were fake and part of a scheme to defraud people looking for a part-time online job. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that its famous name “B&B Hotels” has been used as a brand, a commercial name and a shop sign since as early as 1990 to offer services in more than 800 hotels worldwide, in restaurants and temporary accommodations as well as in relation to booking services, including through the Internet, to a wide range of customers. Complainant submits that the disputed domain name is confusingly similar to Complainant’s BB-HOTEL and B&B HOTELS trademarks, as it incorporates the textual elements of the latter almost entirely, together with a few derivations. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not licensed or authorized Respondent in any way to use its BB-HOTEL and B&B HOTELS trademarks, (2) the disputed domain name directed at some point to a phishing and scamming website, for the purpose of stealing money, and, therefore (3) the
page 3 disputed domain name is only used to benefit from Complainant’s brand reputation and mislead Internet users into thinking that they have reached Complainant’s website, leading them to think that they will be dealing with the real Complainant which is not the case. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Complainant’s BB-HOTEL and B&B HOTELS trademarks are well-known and represent a famous hotel chain operating for instance in France and in the European Union where those trademarks are widely used, (2) the website accessible under the disputed domain name was used to display Complainant’s trademarks, demonstrating that Respondent knew about Complainant ‘s business activities, and (3) the website under the disputed domain name was also used to direct to a phishing and scamming website, for the purpose of stealing money as reported by a third-party victim of a scam coming from this website. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark(s) and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of its BB-HOTEL and B&B HOTELS trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Also, the Panel finds that such trademarks are recognizable within the disputed domain name, as they are reproduced therein almost entirely, however in a typosquatted version, e.g. by inserting a hyphen (instead of an ampersand) between the letters “b” and “b”, and by adding wrongly spelled descriptive terms such as “oline” (instead of “online”). Accordingly, the disputed domain name is confusingly similar to Complainant’s trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, e.g. the terms “o(n)line)” as well as “exclusive”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s BB-HOTEL and B&B HOTELS trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel, therefore, holds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Second, paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. In particular, Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use either of its BB-HOTEL or B&B HOTELS trademarks, either as a domain name or in any other way, e.g. in a typosquatted version. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name, and Respondent does not appear to have any trademark rights associated with e.g. the terms “bbhotel” and/or “bbhotels” on its own. Finally, the disputed domain name resolved at some point in the past to a website which purported to offer online job opportunities with Complainant without any authorization to do so, thereby prominently displaying Complainant’s official B&B HOTELS logo; as evidenced by an Internet user who contacted Complainant via email on September 13, 2024, those job opportunities were fake and part of a scheme to defraud people looking for a part-time online job. Such use of the disputed domain name, therefore, neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. In this context, panels have also long held that the use of a domain name for illegal/fraudulent activities can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel, therefore, finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Third, the Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s business in the hotel and restaurant industry and its rights in the undisputedly famous BB-HOTEL and B&B HOTELS trademarks when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name, which constitutes a typosquatted version of Complainant’s undisputedly famous BB-HOTEL and B&B HOTELS trademarks to run a website which purported to offer online job opportunities with Complainant without any authorization to do so and as part of a scheme to defraud people looking for a part-time online job, thereby prominently displaying Complainant’s official B&B HOTELS logo, is a clear indication that Respondent intentionally attempted to attract Internet users to its own website by creating a likelihood of confusion with Complainant’s BB-HOTEL and B&B HOTELS trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph
page 5 4(b)(iv) of the Policy. In this context, panels have also long held that the use of a domain name for illegal/fraudulent activities, here phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4. Finally, it also carries weight in the eyes of the Panel that Respondent obviously provided false or at least incomplete contact information in the WhoIs register for the disputed domain name since the Written Notice on the Notification of Complaint dated October 7, 2024 could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding. The Panel, therefore, holds that Complainant has established the third element of the Policy, too. 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, , be transferred to Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: November 6, 2024
Full & Egal Universal Law Academy