ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION B&B Hotels v. Domain Privacy, Domain Name Privacy Inc. Case No. DCO2024-0060 1. The Parties The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France. The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2024. On September 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 (REDACTED FOR PRIVACY (DT), Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2024, 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 September 12, 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 the Respondent of the Complaint, and the proceedings commenced on September 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2024.
page 2 The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 10, 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 It results from the Complainant’s undisputed allegations that it has been incorporated in 1990 and its name B&B Hotels has been used as a brand, a commercial name and a shop sign since as early as 1990. Since that date, the Complainant has been offering services of hotels, restaurants, temporary accommodations and related booking services, including through the Internet, to a wide range of customers. There are more than 748 hotels worldwide in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, Czech Republic, and Brazil and among which circa 396 hotels are operating in France. The Complainant is the registered owner of many trademarks that consist of or include the elements “hotel” and “bb”, such as HOTELBB (e.g., French trademark registration No. 3182312, registered since August 29, 2002, covering protection for hotel services in class 43). In addition, the Complainant uses the domain names (registered on February 18, 1998), and (registered on November 1, 2001), which redirect to its main corporate website, showing its hotel and restaurant activities and offering on-line reservation services. It also owns the domain names (registered on January 30, 2006), and (registered on July 1, 2021). The disputed domain name was registered on July 29, 2024. Furthermore, the undisputed evidence provided by the Complainant proves that it resolves to a parking page displaying Pay-Per-Click (“PPC”) links in the Complainant’s area of activity (i.e., hotels and travels booking platforms) and is offered for sale. The disputed domain name is listed as being for sale for “$688”. The Complainant sent a cease-and-desist letter to the Registrar on August 7, 2024. The same day, the Registrar confirmed the receipt of the letter and indicated it did not have the authority to decide who should legally own a domain name, and suggested the Complainant to file an UDRP complaint. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: (1) the disputed domain name is identical or confusingly similar to the Complainant’s trademark since it merely incorporates the element “hotel” and “bb”, which correspond to the Complainant’s trademarks, which are famous for an economic hotel chain in France and Europe and, therefore, well known in the customer's mind; (2) the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the disputed domain name directs to a parking page with PPC links to hotels and travels booking platforms, i.e., the same activity as the Complainant and is indicated to be for sale demonstrating that there is no legitimate activity. In addition, the Respondent is still anonymous and the Complainant did not find any information on the Respondent through the address and telephone number provided. The Respondent is currently not and has never been known under the name “Hotelbb” and it is not currently and has never been offering any goods or services under that name. The Complainant has not licensed or
page 3 authorized the Respondent in any way to use its trademarks. The Complainant has never allowed the Respondent to register or to use the disputed domain name; (3) the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent was aware of the existence of the Complainant’s trademarks at the time of registration of the disputed domain name, and therefore registered the disputed domain name in bad faith, since the disputed domain name is a parking page with PPC links to websites that are related to hotel booking, i.e., the exact same activity as the Complainant and the disputed domain name is listed for sale and is not used for a legitimate activity. The disputed domain name was clearly registered in order to get money out of this registration by selling it. 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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled: (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 has been registered and is being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar 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 the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name (adding a hyphen) is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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. Moreover, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation, since the disputed domain name is almost identical to the Complainant’s trademark HOTELBB (see WIPO Overview 3.0, at section 2.5.1), and that the trademark HOTELBB is not a combination of terms that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. Further, removing the Top-Level Domains, the disputed domain name is identical to the Complainant’s domain name , which may mislead customers into thinking that the disputed domain name could be affiliated with the Complainant. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. One of these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy). In the present case, the Panel notes that the Respondent has registered the disputed domain name for the purpose of selling it either to the Complainant or to third parties, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name. According to the Complainant’s uncontested allegations, the disputed domain name is listed as being for sale for “$688”. This Panel finds that this sum is likely in excess of any out-of-pocket costs directly related to the disputed domain name (see, e.g., Tosara Pharma Limited v. Super Privacy Service LTD c/o Dynadot / zuhal topuz, WIPO Case No. D2021-4062). In addition, the disputed domain name resolves to a parking page displaying PPC links in the Complainant’s area of activity, which demonstrates the Respondent’s bad faith in intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark pursuant to paragraph 4(b)(iv) of the Policy. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. On this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:
page 5 (i) the nature of the disputed domain name (i.e., a domain name almost identical to the Complainant’s mark and domain name); (ii) the content of the website to which the disputed domain name directs (i.e., a parking page displaying PPC links in the Complainant’s area of activity); (iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of the disputed domain name. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Tobias Malte Müller/ Tobias Malte Müller Sole Panelist Date: October 24, 2024
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