B&B Hotels, France, send its legal team across the pond to England, where the holder of the domain Hotelbnb.com is located.
In the ensuing UDRP the Complainant cited several French and European marks, such as B&B HOTEL and B&B HOTELS and the inability to register the ampersand as part of a domain. Its assets include the domains hotel-bb.com and hotel-bb.fr.
The domain Hotelbnb.com is registered in 2001 and it’s listed for sale at DAN.com. The Respondent represented themselves in their response to the Complaint:
The Respondent denies prior awareness of the Complainant and points out that the Complainant does not appear to operate in the United Kingdom where he resides. The Respondent questions whether the Complainant has trademark rights in the United Kingdom and asserts that in any event the Complainant’s mark is not a “household name” in the United Kingdom as it may be in France.
The Respondent argues that “hotel” and “bnb” (a variation of “b&b”, an acronym for “bed and breakfast” accommodations) are widely understood terms with a common meaning in English and not distinctly associated with the Complainant, and this is why the Domain Name has value for “a reasonable price”. The Respondent denies having earned any revenues from the Domain Name to date but acknowledges his interest in auctioning the Domain Name, as “domain trading is a legitimate bona fide business”.
Despite acquiring the domain in 2018 most likely, the Respondent won the case, as the sole panelist at the WIPO pointed out that the domain’s elements are rather generic:
The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts.
Final decision: Deny transfer of the domain Hotelbnb.com to the Complainant. The Respondent’s request for a finding of Reverse Domain Name Hijacking was denied as well.
The domain transfer was denied.
B&B Hotels v. Lesley Coombs
Case No. D2021-2174
1. The PartiesThe Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.
The Respondent is Lesley Coombs, United Kingdom, self-represented.
2. The Domain Name and RegistrarThe disputed domain name <hotelbnb.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 9, 2021, 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 July 12, 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent sent informal communications to the Center on July 15 and July 16, 2021, and a formal Response was filed with the Center on August 13, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 25, 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 BackgroundThe Complainant is a French stock company established in 1990 and headquartered in Paris. The Complainant operates hotels, restaurants, short-term rental accommodations, and related booking services (including online reservations), with a portfolio of more than 500 hotels in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, the Czech Republic, and Brazil. As well as using B&B HOTEL and similar marks in print and in signage, the Complainant uses multiple corresponding domain names (where the ampersand cannot be employed) for its websites. These include <hotel-bb.com> (first registered February 2, 1998), <hotel-bb.tm.fr> (April 8, 1998), and <hotel-bb.fr> (May 24, 2000).
The Complainant holds multiple trademark registrations, including the following:
MARK
JURISDICTION
NUMBER
REGISTRATION DATE
B&B HOTEL (combined word and figurative mark)
France
1635994
December 7, 1990
B&B HOTEL (combined word and figurative mark)
International Trademark
656222
June 28, 1996
BBHOTEL (word mark)
France
3182311
August 29, 2002
HOTELBB (word mark)
France
3182312
August 29, 2002
BB-HOTEL (word mark)
France
3182313
August 29, 2002
B&B HOTELS (combined word and figurative mark)
European Union
004767323
December 12, 2006
The Registrar reports that the Domain Name was created on July 26, 2001, and is registered to the Respondent Lesley Coombs of the United Kingdom, listing no organization.
The Domain Name resolves to a landing page hosted by “Dan.com” (“an Undeveloped BV subsidiary”) advertising the Domain Name for sale as “Listed by Super Brands”. The landing page advertises the domain transfer services of Dan.com. The page is offered in seven languages but solicits offers for the Domain Name denominated in GBP, with a minimum offer of GBP 4,997. The Terms of Use on the website explain that Undeveloped B.V. is a registered Dutch company located in Amsterdam, and Dan.com, Inc. is a company located in Athens, Georgia (United States of America).
The Panel notes that screenshots of the website associated with the Domain Name at various times since its initial registration two decades ago, found on the Internet Archive’s Wayback Machine, show that the Domain Name has been used for a number of different purposes. In February 2018, the Domain Name resolved to a landing page listing it for sale by the Respondent (“Listed by Lesley Coombs”) using the Undeveloped BV transfer service and buyer protection plan. But through much of 2017, the Domain Name resolved to a website advertising “a new travel booking site” for consumers disappointed with “Airbnb, Booking.com, Hotels.com, Expedia, Trivago, etc.” In September 2016, it resolved to a Sedo parking page with third-party pay-per-click (“PPC”) advertising, and Sedo advertised the Domain Name for sale in some of the previous years.
5. Parties’ Contentions
A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to the textual elements of its B&B HOTEL and similar marks and that the Respondent has neither permission to use those marks nor other apparent rights or legitimate interests in the Domain Name, which it has only tried to sell.
The Complainant argues that “a famous trademark cannot be ignored” and presumes the Respondent’s prior awareness of its marks. Indeed, the Complainant considers that this explains the high price that the Respondent demands for the Domain Name. Summarizing its grounds for inferring bad faith, the Complainant concludes as follows:
“It is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name since it has registered it since 2001 and has never used it. The main goal being to sell it to the best bidder. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration (see in [sic] Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).”
B. RespondentThe Respondent denies prior awareness of the Complainant and points out that the Complainant does not appear to operate in the United Kingdom where he resides. The Respondent questions whether the Complainant has trademark rights in the United Kingdom and asserts that in any event the Complainant’s mark is not a “household name” in the United Kingdom as it may be in France.
The Respondent argues that “hotel” and “bnb” (a variation of “b&b”, an acronym for “bed and breakfast” accommodations) are widely understood terms with a common meaning in English and not distinctly associated with the Complainant, and this is why the Domain Name has value for “a reasonable price”. The Respondent denies having earned any revenues from the Domain Name to date but acknowledges his interest in auctioning the Domain Name, as “domain trading is a legitimate bona fide business”.
The Respondent requests a finding of reverse domain name hijacking.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used 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 SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for word marks (BBHOTEL, HOTELBB, BB-HOTEL) and combined marks with prominent word elements (B&B HOTEL, B&B HOTELS) that are similar to the Domain Name visually, phonetically, and in meaning. The letter “n” in the Domain Name is often used in casual English to replace the word “and”, as is the ampersand symbol found in the Complainant’s marks, which cannot be used in domain names for technical reasons. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that both Domain Name is confusingly similar to the Complainant’s registered marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights 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) that 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has demonstrated trademark rights and the facts that the Respondent is not known by a corresponding name and has not used the Domain Name for a relevant commercial offering or noncommercial fair use and has shown no evidence of preparing to do so. The Respondent points out that the terms comprising the Domain Name have a dictionary sense. This fact may make a domain name more valuable as an investment for resale, and it is often relevant to the assessment of bad faith under the third element of the complaint, but it is not usually viewed by UDRP panels as sufficient to confer “rights or legitimate interests” unless the respondent has taken steps, for example, to develop a relevant website (see WIPO Overview 3.0, section 2.10).
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant does not squarely rely on any of these examples but argues that the Respondent must have known of its “famous hotel chain” “in France and in Europe”, registered a Domain Name with “a high degree of similarity” to the Complainant’s marks, creating a likelihood of confusion, and then suspiciously sought to sell the Domain Name “for a high price”, while doing nothing to create a website with content.
These arguments are not persuasive. The Domain Name is comprised of the English dictionary word “hotel” and the string “bnb”, a variation of the common acronym “b&b”, which stands for “bed and breakfast”. Those words are very common on Internet travel websites. This is not, then, a case on all fours with Telstra, supra, or Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, as the Complainant suggests, where the mark in question is both well-known and highly distinctive and it is “not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name”. See WIPO Overview 3.0, section 3.3. It is all too easy to conceive of legitimate ways to use the Domain Name to advertise or publish information about hotels and bed and breakfast establishments, without necessarily infringing on the Complainant’s trademarks or the Policy. There are already websites using similar domain names such as <bhotels.co>, <bhotelsandresorts.com>, <bnbfinder.com>, <btobhotels.com>, <b4bhotels.com>, <bbonline.com>, <modernbb.com>, <bbcanada.com>, besides the better known <hotels.com> and <airbnb.com>.
The less distinctive the mark, the harder it is to establish the likelihood that a similar, descriptive domain name was chosen for its trademark rather than dictionary value. The Panel notes that neither Party here has established when the Respondent acquired the Domain Name (the archived screenshots suggest that this occurred in late 2017 or early 2018, not in 2001 when the Domain Name was first created), but in any event it is undisputed that the Complainant had relevant trademarks from the 1990s onward. The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts. The Respondent’s denial of prior awareness is plausible, and the Respondent’s intention of selling the Domain Name at auction is not in itself proof of bad faith. There is no indication that the Respondent is a competitor or serial cybersquatter or, indeed, that the Respondent made any effort over a period of years to contact the Complainant about selling the Domain Name.
In sum, the Complainant has the burden of proof to establish the likelihood of bad faith in the registration and use of the Domain Name, and the Panel does not find that it has met its burden on this record. The Panel concludes that the Respondent prevails on the third element of the Complainant.
7. DecisionFor the foregoing reasons, the Complaint is denied.
8. Reverse Domain Name HijackingParagraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
Much of the Response is given over to detailing UDRP decisions finding RDNH. These are most often cases where it would have been nearly impossible to support a complaint, typically because the disputed domain name was registered long before the complainant had a trademark. As other panels have concluded, “mere lack of success of a complaint is not itself sufficient for a finding of RDNH”. WIPO Overview 3.0, section 4.16. There are nearly always problems with a UDRP complaint such as this one that is brought 20 years after the registration of the disputed domain name, precisely because it is difficult to establish bad faith at the time of registration. But in this case, the Complainant did have trademark rights beginning at least a decade before the domain name registration (even more if the acquisition was later, as seems to be the case). This Complainant has prevailed in other UDRP proceedings against absent respondents, albeit with closely imitative domain names that were more clearly attempts at typosquatting, or with other indicia of bad faith such as using the domain name for fraudulent emails.
The balance of probabilities in this contested case does not weigh in favor of the Complainant on the question of the Respondent’s bad faith, but the record also does not support a finding that the Complaint was brought in bad faith. The Respondent objects to being maligned, but the evidence has been submitted and weighed – in the Respondent’s favor.
The request for a finding of reverse domain name hijacking is denied.
Blackmer, W. Scott
Sole Panelist
Date: September 9, 2021
