B&B Hotels v ibrahim khan

WIPO Case No. D2024-1295

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

B&B Hotels v. ibrahim khan

Case No. D2024-1295

1. The Parties

The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France.

The Respondent is ibrahim khan, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <bbgenerationhotel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2024. On March 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 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 April 5, 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 April 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2024.

The Center appointed Dawn Osborne as the sole panelist in this matter on May 2, 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.

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4. Factual Background

The Complainant is an established hotel operator with 748 hotels around the world called B & B HOTELS. It owns many trademarks consisting of or containing B&B HOTELS and BB HOTEL, including trademark no. 3182311 for BB HOTEL (word mark) registered in France for hotel services since February 14, 2003. It owns many domain names including <bbhotel.eu> (ampersands not being registrable as part of a domain name).

The disputed domain name was registered August 21, 2023, and it resolves to a parked page with pay-per- click (“PPC”) links.

The Complainant has previously succeeded against the Respondent for registration of a domain name containing the Complainant’s BB HOTEL mark (B&B Hotels v. ibrahim khan, WIPO Case No. D2022-4804 (<bbshotelapartment.com>)). The Respondent owns other domain names which may reference third party trademarks.

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:

The disputed domain name is confusingly similar to the Complainant’s BB HOTEL mark merely adding the word “generation” and the generic Top-Level Domain “.com” which do not prevent confusing similarity between the disputed domain name and the Complainant’s trademark.

The Respondent is not commonly known by the disputed domain name and is not authorised by the
Complainant and has no rights or legitimate interest in the disputed domain name.

The disputed domain name is pointed to a parking page so there is no bona fide offering of goods or services or legitimate non commercial fair use.

The disputed domain name cannot be put to a legitimate purposes because it is inherently confusing with the
Complainant’s trademark and domain names.

The Respondent knew about the Complainant and its rights and business at the time of registration of the disputed domain name in August 2023 as the Respondent had already been involved in and lost an unrelated domain name containing the Complainant’s BB HOTEL mark under the Policy in February 2023.

The disputed domain name is being passively held in opportunistic bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

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 trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “generation”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

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.

The Respondent is not commonly known by the disputed domain name and is not authorised by the or services or legitimate non commercial fair use.

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.

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.

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In the present case, the Panel notes that before the registration of the disputed domain name the and the Respondent appears to own other domain names that may reference the trademarks of third parties. As such the Respondent appears to be involved in a pattern of bad faith conduct and had actual knowledge of the Complainant and its rights and business before registration of the disputed domain name.

Respondent had already been the subject of an adverse decision under the Policy in favour of the

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.

The disputed domain name resolves to a parked page that displays various PPC links. According to section 3.5 of the WIPO Overview 3.0, such use can indicate the Respondent’s bad faith. Under the circumstances of this case, the composition of the disputed domain name, the content of the website to which the disputed domain name resolves, which consists of PPC commercial links, and the previous adverse decision against the Respondent for registration of a domain name containing the Complainant’s BB HOTEL mark before the disputed domain name was registered, suggests to the Panel that the Respondent has intended to create a likelihood of confusion and to mislead Internet users searching for the Complainant’s website and to redirect them to the links at the relevant PPC pages.

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 <bbgenerationhotel.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: May 10, 2024