ADMINISTRATIVE PANEL DECISION

Société Air France v. Atul Sharma

Case No. D2008-0330

1. The Parties

Complainant is Société Air France (“Complainant”), of Roissy, France, represented by Meyer & Partenaires, France.

Respondent is Atul Sharma (“Respondent”), of Karnataka, India.

2. The Domain Name and Registrar

The disputed domain name <airfrancelimited.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008 by email and March 6, 2008 in hardcopy. On March 7, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 7, 2008, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 12, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 12, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 1, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on April 3, 2008.

The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on April 14, 2008. 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 well known major international airline company, tracing its origins back to 1933, and the owner of the AIR FRANCE mark. Complainant owns numerous trademark registrations worldwide that consist of or include the mark AIR FRANCE, including India Registration No. 1276424, registered on June 12, 2006, for the mark AIR FRANCE. In support of its Complaint, Complainant provided evidence of other trademark registrations consisting of the mark AIR FRANCE dating as far back as 1991.

Complainant operates an international web portal at “www.airfrance.com.” Complainant has also registered numerous generic and country code top-level domain names that consist of or include the mark AIR FRANCE.

Respondent registered the Disputed Domain Name with the Registrar on July 31, 2007.

Complainant provided evidence that the Disputed Domain Name resolves to a website indicating the site is “under construction.” This is still the case as of the date of this decision.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends that the Disputed Domain Name is confusingly similar to its AIR FRANCE trademark and, in fact, entirely reproduces the AIR FRANCE trademark. Complainant contends that the suffix “limited” is a common word in the English language and the combination of the trademark AIR FRANCE with the word “limited” in the Disputed Domain Name does not eliminate the risk of confusion with the Complainant’s mark. Complainant further contends that Complainant’s AIR FRANCE trademark is the only distinctive element of the Disputed Domain Name and that the mere addition of a generic or descriptive term to a Complainant’s otherwise distinctive or well known mark does not serve to distinguish the Disputed Domain Name from Complainant’s mark.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant contends that Respondent is not related in any way to Complainant’s business, that Respondent is not currently, and has never been, known by “Air France” or “Air France Limited,” that Respondent was not authorized by Complainant or granted a license by Complainant to use the AIR FRANCE mark, that Respondent has registered the Disputed Domain Name to take advantage of Complainant’s well-known trademark and to disrupt its business, and that the passive holding of the Disputed Domain Name by Respondent is not a bona fide offering of goods or services or a non-commercial or fair use. Complainant contends that Respondent has not engaged in any action that shows Respondent has rights or legitimate interests in the Disputed Domain Name.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent could not have ignored Complainant’s well-known trademark AIR FRANCE at the time Respondent registered the Disputed Domain Name and that Respondent’s passive holding of the Disputed Domain Name constitutes bad faith use.

In support of its contentions, Complainant has made several references to previous UDRP decisions.

Complainant is seeking transfer of the Disputed Domain Name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, the Policy, Paragraph 4(a), requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there are support, pursuant to the Rules, Paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, Paragraph 14(b).

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s AIR FRANCE mark. The Disputed Domain Name consists of the widely recognized trademark AIR FRANCE and the addition of the generic term “limited.”

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s AIR FRANCE word mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The addition of the generic term “limited” as a suffix does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s AIR FRANCE mark. See, e.g., British Airways Plc. v. David Moor, WIPO Case No. D2006-1224 (adding the word “limited” to a disputed domain name consisting of complainant’s trademark in its entirety “does nothing to alleviate the confusing similarity”); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with widely-known mark still found confusingly similar to that mark); Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in <okidataprinter.com> was confusingly similar to complainant’s trademark OKIDATA). In short, a domain name that incorporates a widely recognized trademark in its entirety as the only distinctive element of a domain name, as is the case here, is confusingly similar to that trademark; the inclusion of a generic term in the domain name does not distinguish the domain name from that mark.

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the AIR FRANCE mark, a widely-known trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.

The Disputed Domain Name resolves to a holding page which states “This site is under construction. Please visit again to check the status. Thanks!” This page does not offer any services or goods sold by reference to the registered trademarks for AIR FRANCE.

Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant has asserted that Respondent is not related to Complainant’s business and that Complainant never granted Respondent a license to use the mark. Moreover, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert customers or to tarnish the AIR FRANCE mark. Indeed, the undisputed record indicates that Respondent registered the Disputed Domain Name approximately 74 years after Complainant became known by the trade name “Société Air France” and more than one year after Complainant established rights in its AIR FRANCE mark through its registration in India, Respondent’s apparent residence.

In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Name.

For these reasons, in accordance with the Policy, Paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant argues that Respondent registered and used the Disputed Domain Name in bad faith. Complainant contends that Respondent could not have ignored Complainant’s international reputation at the time Respondent registered the Disputed Domain Name and, in fact, that Respondent registered the Disputed Domain Name precisely because he knew the well-known character of Respondent’s AIR FRANCE mark, for the sole purpose of disrupting Complainant’s business. In addition, Complainant contends that Respondent’s passive holding of the Disputed Domain Name constitutes bad faith. This Panel agrees.

The Panel notes that previous UDRP panels have recognized that the AIR FRANCE trademark is widely known. See, e.g., Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337; Société Air France v. Alvaro Collazo, WIPO Case No. D2004-0446; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417; Société Air France v. Kitchkulture, WIPO Case No. D2002-0158.

Given Complainant’s widely recognized AIR FRANCE mark, the Panel finds that it is unlikely Respondent was unaware of Complainant and its business when Respondent registered the Disputed Domain Name. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Moreover, the Panel is further convinced of Respondent’s bad faith because it is unlikely that there is any legitimate reason for Respondent’s choice of the Disputed Domain Name incorporating Complainant’s widely known AIR FRANCE mark, and Respondent elected not to respond to the Complaint. See Telstra Co. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate”); Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCR co.”, WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant); eBay, Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would be legitimate.”).

Furthermore, it is widely accepted that passive holding of a domain name does not as such prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding the respondent’s passive holding of the domain name constituted bad faith); Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (same). In such cases, the panel must examine all the circumstances to determine whether the respondent is acting in bad faith.

In this case, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Name in bad faith. The Panel again notes that Complainant’s AIR FRANCE trademark is widely known, that Respondent has failed to respond to the Complaint or otherwise participate in these proceedings, and that the Panel can not conceive of a good faith use of the Disputed Domain Name by Respondent. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case.

7. Decision

For all the foregoing reasons, in accordance with the Policy, Paragraph 4(i), and the Rules, Paragraph 15, the Panel orders that the domain name, <airfrancelimited.com>, be transferred to Complainant.

Steven M. Auvil
Sole Panelist

Date: April 28, 2008