Hotel-bnb.com, Wiki-hotel-bnb.com

The timeline behind hotel-bnb.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION B&B Hotels v. Marco Galli, Marco Galli Case No. D2025-0548 1. The Parties The Complainant is B&B Hotels, France, represented by Fiducial Legal By Lamy, France. The Respondent is Marco Galli, Marco Galli, Italy. 2. The Domain Names and Registrar The disputed domain names <hotel-bnb.com> and <wiki-hotel-bnb.com> are registered with Register SPA (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2025. On February 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 13, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 14, 2025, the Center informed the parties in Italian and English, that the language of the registration agreement for the disputed domain name is Italian. On February 14, 2025, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. The Center verified that the 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 in both English and Italian, and the proceedings commenced on February 18, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2025. The Respondent sent email communications to the Center on February 18, 20, and 21, 2025. The Respondent filed a Response on March 6, 2025. page 2 On March 12, 2025, the Complainant filed an unsolicited supplemental filing. The Respondent also filed an unsolicited supplemental filing on March 12, 2025. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 14, 2025. 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 The Complainant operates a portfolio of budget or value hotels. It was incorporated in France in 1990 and, according to the Complainant, has been using its brand “B&B Hotels” for its hotels since then. Although the Complainant is headquartered in France, the Complaint provides evidence that there are some 860 hotels operating under its brand. This includes some 432 hotels in France, 211 hotels in Germany, and 77 hotels in Italy. Most of the remaining hotels are in European countries but seven are in Brazil and two in the United States. In France alone, the Complainant’s hotels generated revenues of EUR 220 million in 2021. In addition to its hotels themselves, the Complainant promotes its services from a number of websites, the main website being “www.hotel-bb.com”. The Complainant registered this domain name in December 2011. The Complaint includes evidence that the Complainant owns a number of registered trademarks including: (1) French Registered Trademark No. 3182311, BBHOTEL, which was registered on February 14, 2003, with effect from August 29, 2002, in respect of relevant hotel and accommodation services in International Class 43; (2) French Registered Trademark No. 3182312, HOTELBB, which was registered on February 14, 2003, with effect from August 29, 2002, in respect of relevant hotel and accommodation services in International Class 43; (3) French Registered Trademark No. 3182313, BB-HOTEL, which was registered on February 14, 2003, with effect from August 29, 2002, in respect of relevant hotel and accommodation services in International Class 43; (4) European Union Trademark No 004767323, B&B HOTELS (figurative), which was registered on December 12, 2006, in respect of hotels, restaurants, cafeterias, bars, reservation of hotels and temporary accommodation services in International Class 43; The figurative version of the trademark is for the following sign: The websites linked in the Complaint show use of this figurative mark but also show significant use of the plain word mark “B&B HOTELS”. The disputed domain names were registered on June 8, 2024. page 3 At this stage, they do not resolve to an active website. The Response includes links to what are said to be prototypes for a planned website (or websites). According to the Response, the Respondent incorporated a new company, Bazillion srl SB on July 11, 2024 for an online travel agency business. The proposed websites relate to that proposed business. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Paragraph 15(a) of the Rules directs the Panel to decide the 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. Language of the Proceeding The language of the Registration Agreement for the disputed domain names is Italian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint, however, was filed in English and the Complainant requested that the language of the proceeding be English for several reasons, including the fact that it is a French company which would be prejudiced by being required to arrange translations into Italian (although it has substantial operations in Italy), the Registrar’s website is in English, the registration agreement is in English and there has been some correspondence with the Respondent in English. The Response has been submitted in English also. In the Response, the Respondent did not make any specific submissions with respect to the language of the proceeding although the Respondent’s prior communications with the Center had been in Italian. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), section 4.5.1). The most compelling consideration in this case is that the Response has been submitted in English. It has (if the Panel may say so) been expressed perfectly clearly and comprehensibly. In addition, the Respondent has not objected to the proceeding being conducted in English or claimed any particular prejudice. Accordingly, the Panel exercises the discretion under paragraph 11(a) of the Rules to conduct the proceeding in English. page 4 B. Supplemental Filings Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. In the present case, the Complainant’s supplemental filing essentially responds to the Respondent’s allegations that the Complainant’s trademarks are purely descriptive. In circumstances where the Complaint includes evidence of almost 30 prior disputes concerning the Complainant’s trademark dating back to 2011 in which no such attack has emerged and the Complainant does in fact have registered trademarks for its word-only marks, 1 the Panel does not think the Complainant can be criticized for not advancing the specific evidence sought be introduced through the supplemental filing. Accordingly, the Panel proposes to admit the Complainant’s unsolicited supplemental filing and the Respondent’s responding supplemental filing. C. Identical or Confusingly Similar The first element that the Complainant must establish for each disputed domain name is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights. 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 3.0 , section 1.7. The Complainant has proven ownership of the registered trademarks identified in section 4 above. The comparison of the disputed domain names to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0 , section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0 , section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0 , section 1.10. To a native English speaker, the figurative elements of the Complainant’s trademark are likely to be significant. However, the Panel is conscious that the vast bulk of the Complainant’s operations and, presumably, customer base are in countries where English is not the first language. In those cases, it may 1 The Panel acknowledges that most of the prior cases were “no response” cases in which the respondent did not participate. page 5 well be that the figurative elements of the Complainant’s trademarks are not so dominating that the verbal element cannot be considered an essential or important part of the trademark in this case. In addition, the Panel notes the websites referenced in the Complaint use the word mark “B&B Hotels” in addition to the figurative mark. Accordingly, it is appropriate to apply the usual rule. <hotel-bnb.com> Disregarding the “.com” gTLD and the hyphen, 2 the disputed domain name consists of the Complainant’s registered trademark HOTELBB with the letter “n” interposed between the “b”s. Aurally, it also sounds the same as or very close to the verbal element of the figurative mark – only in reverse order given the “&” will be understood as “and”. The Respondent contends that “hotel” and “bnb” are descriptive and so the interposition of the “n” is important and distinguishes the disputed domain name from the Complainant’s trademarks. The Complainant disputes these contentions. Given the nature of the inquiry at this stage, it is more appropriate to address this disagreement in the context of the second and third elements under the Policy. It appears likely to the Panel that someone who is familiar with the Complainant’s B&B Hotels mark, either the registered figurative mark or the unregistered verbal version, could very well recall the mark in reversed order. As this requirement under the Policy is essentially a standing requirement, therefore, the Panel finds that the Complainant has established that the first disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. <wiki-hotel-bnb.com> The same analysis applies to the second disputed domain name. This disputed domain name does include the additional term “wiki” but the trademarks remain recognizable within the disputed domain name. WIPO Overview 3.0 , section 1.8. Accordingly, the Panel finds that the second disputed domain name is also confusingly similar to the Complainant’s trademark. D. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy sets out three examples of circumstances which can be situations in which the Respondent has rights or legitimate interests in a disputed domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. While 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 often impossible 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. 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. There is no dispute between the Parties that: 2 Telstra Corporation Limited v. Ozurls, WIPO Case No D2001-0046. page 6 (1) The Respondent registered the disputed domain names after the Complainant began using the trademark and also after the Complainant had registered its trademarks; (2) The Respondent is not affiliated with the Complainant; (3) The Complainant has not otherwise authorised the Respondent to use the disputed domain names; (4) The disputed domain names are not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain names could be derived. These factors are usually sufficient to establish a prima case that the Respondent does not have rights or legitimate interests in a disputed domain name. As already noted, the Respondent contends that both “hotel” and “bnb” are descriptive terms as is their combination. The Respondent further contends that he registered the disputed domain names in connection with an online travel agency he is establishing for use in relation to a website or websites containing information about hotels and bed & breakfast accommodation. The Complainant disputes that “bnb” is a descriptive term and in its supplemental filing has submitted a range of dictionaries in French, German, Italian and Spanish which do not list meanings for the expression. The Complainant also contends that the letters “BB” might refer to “Brigitte Bardot”, “Basketball”, “Bye-bye”, “Bag & Baggage” or “Bread & Butter” and submits some dictionary references to support that. As to this second contention, the significance of a term, even a dictionary term, under the Policy can depend very much on context. WIPO Overview 3.0 , section 2.10. Whether the term “bnb” has received official recognition in dictionaries (or as in this case, not) is not decisive. It can be readily understood as a colloquialism. By the time the Respondent registered the disputed domain names, many people around the world would be familiar with “bnb” standing for a type of accommodation as a result of its use in services like “Airbnb”. Indeed, the words of the Complainant’s managing director recognize this when he explained in an article in Coté Brest that the word B&B is “a name that does not mean bed and breakfast as one might suppose, it is just the brand B&B, it can mean whatever one wants, Brest and Breton for example”. (emphasis supplied) The Panel can accept the Complainant’s contention that “hotel” and “bnb” is not a widely used combination such as an expression like “red flag” (at least on the evidence before the Panel). Normally, one would expect the individual terms to appear on their own but with another term, e.g., “Joe’s B ’n B” or “Hotel XYZ” but not together. Next, the Panel does not accept the incorporation of the Respondent’s company as evidence of demonstrable preparations to use the disputed domain names. The name of the company is not at all similar to the disputed domain names and, in any event, the incorporation of a company would not trump prior trademark rights. It is also necessary to acknowledge that the Complaint has been initiated in a very short time after the disputed domain names were registered. However, the Respondent has submitted some evidence of preparations to use at least one of the disputed domain names with a mock-up of a proposed website. The Respondent has requested confidentiality about this website so the Panel will not go into detail about it. That is not the end of the matter, however. page 7 First, the Panel is conscious that the creation of a website, or even a mock-up of a website, does not necessarily involve much in the way of investment of time and resources. Secondly, the example provided by paragraph 4(c)(i) of the Policy is: “before any notice to you of the dispute, your 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.” This requires three conditions: (1) there must be use or (as claimed here) demonstrable preparations to use the disputed domain names, (2) in connection with a good faith offering of goods or services, and (3) this must be underway before notice of the dispute. The precise timing of the preparation of the mock-up (if it is sufficient to constitute demonstrable preparations) is not clear and the Complainant’s cease and desist letter sent to the Registrar was sent within two weeks of registration of the disputed domain names and a second cease and desist letter was sent directly to the Respondent on July 15, 2024. A more fundamental problem for the Respondent is the requirement of good faith. In that connection, even accepting the potentially descriptive nature of “hotel” and “bnb”, the Respondent’s contentions do not come to grips with the Complainant’s extensive use and reputation of its trademarks. Given that extensive use and reputation, it does not seem credible that someone who is setting up an online travel agency in Italy would not be familiar with the Complainant and its trademarks. Against that setting, it seems likely that the Respondent would have realized there was a real risk of confusion with the Complainant’s trademarks or at the least turned a blind-eye to that risk. In those circumstances, the Panel is not prepared to find that the Respondent has adopted the disputed domain names in good faith and, therefore, the Respondent has not rebutted the prima facie case established by the Complainant. Accordingly, on the materials before the Panel, the Panel finds the Complainant has established the second requirement under the Policy. E. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Group One Holdings Pte Ltd v. Steven Hafto, WIPO Case No. D2017-0183 . As discussed in section 5D above, it appears likely that the Respondent was aware of the Complainant and its trademarks when the Respondent registered the disputed domain names and the risk that use of the disputed domain names would therefore cause confusion with the Complainant’s trademarks and reputation. In light of that finding, the registration of the disputed domain names would constitute bad faith under the Policy and their subsequent use would also constitute use in bad faith. Therefore, the Panel finds the Respondent has registered and used the disputed domain names in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. page 8 6. 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 names <hotel-bnb.com> and <wiki-hotel-bnb.com> be transferred to the Complainant. /Warwick A. Rothnie/ Warwick A. Rothnie Sole Panelist Date: March 28, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.