The Complainant is Société Air France of Roissy CDG Cedex, France, represented by Meyer & Partenaires, France.
The Respondent is PrivacyDotLink Customer 559587 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Alan Wolach of Mexico City, Mexico.
The disputed domain name <airfrance.flights> is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2016, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. On April 27, 2016, the Respondent sent an informal email communication to the Center, pursuant to which the Complainant requested suspension of the proceeding for the purpose of possible settlement. The proceeding was suspended on May 3, 2016, and reinstituted at the request of the Complainant on May 31, 2016. The Complainant filed an amended Complaint on June 1, 2016.
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 June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. No further communications were received from the Respondent.
The Center appointed Keiji Kondo as the sole panelist in this matter on June 27, 2016. 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.
The Complainant is a French airline passenger and freight company known as one of the largest in the world. The company was born on October 7, 1933 from the merger of Air Union, Air Orient, Société Générale de Transport Aérien (SGTA), Compagnie Internationale de Navigation Aérienne (CIDNA) and Compagnie Générale Aéropostale.
As a result of the merger between Air Inter and Air France in 1997, “Compagnie Nationale Air France” becomes “Société Air France”. The Complainant is also a member of the Skyteam alliance since 2000. In 2003, occurs another alliance between two pioneering companies, Air France and KLM, which forms the European’s leading airline group.
With a fleet of 583 airplanes, the Complainant serves 231 cities in 103 countries and represents 1,500 flights everyday. In 2013, Air France-KLM group carried more than 77.3 million passengers and had an EUR 25.52 billion revenue.
This company is operating an international web portal at “www.airfrance.com”.
The Complainant has also registered many domain names consisting of or incorporating the trademark AIR FRANCE. All of these names are redirecting the Complainant’s customers to the aforesaid webpage.
“Société Air France” is the trade name of the Complainant, used in commerce since 1933. Therefore, in this respect, the Complainant has filed many national, European Union and International trademarks consisting or including the wording AIR FRANCE which it owns for years. For instance:
- International trademark AIR FRANCE No. 828334, registered on October 20, 2003, in classes 6, 8, 9, 12, 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45, with subsequent designation of 57 states;
- International trademark AIRFRANCE No. 1123935, registered on May 25, 2012, in classes 9, 16, 18, 35, 36, 37, 38 and 39, with subsequent designation of 22 states; and
- Mexican trademark AIR FRANCE No. 0610116, registered with Instituto Mexicano de la Propriedad Industrial (IMPI) on August 8, 2003, in class 39.
The disputed domain name was registered on September 11, 2015. The disputed domain name resolves to a registrar parking page.
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i))
The Complainant claims that the disputed domain name is identical or at least confusingly similar to the trademarks AIR FRANCE and AIRFRANCE.
First, it is now well established in UDRP cases that “[t]he use or absence of punctuation marks, such as hyphens or spaces, does not alter the fact that a domain name is identical to a mark”. So, it can be held that the radical “airfrance” of the disputed domain name <airfrance.flights>, which reproduces letter-by-letter the Complainant’s trademarks, is identical to the said trademarks.
Second, the generic Top Level Domain (“gTLD”) “.flights”, like any other gTLD, is not of distinguishing effect and has to be ignored in comparing a trademark to a domain name. It is indeed of constant case law that the mere addition of a gTLD to a well-known trademark does not give any distinctive character to the domain name, nor avoid confusing similarity. On the contrary, the gTLD “.flights” belongs, as described by its registry Donuts, to the theme of travelling. Its combination with an airline trademark can only reinforce the confusion with the Complainant.
Third, the disputed domain name is also confusingly similar to the domain name <airfrance.com>, used since years by the Complainant as a worldwide portal.
In view of these elements, the disputed domain name should be considered as identical and confusingly similar to the trademark AIR FRANCE.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. (Policy, paragraph 4(a)(ii))
The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name <airfrance.flights>. The Respondent Alan Wolach is not related in any way to the Complainant’s business: it is not one of its agents and does not carry out any activity for, or have any business with the Complainant. The Respondent is not currently and has never been known under the wording Airfrance or Air France. No license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain name <airfrance.flights>.
In addition, the disputed domain name remains unused. The holding page that is displayed under the disputed domain name cannot be considered as being either a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).
Considering these elements, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name <airfrance.flights>.
(iii) The disputed domain name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii))
At last, the Complainant is required to prove that the Respondent has registered and is using the disputed domain name <airfrance.flights> in bad faith.
(1) Bad Faith Registration
The Complainant has previously demonstrated the strong reputation and the widely known character of its trademark AIR FRANCE throughout the world and for a long time. In similar cases, UDRP panels already decided that the notoriety of a complainant’s trademark creates a prima facie presumption that the respondent registered the domain name for the purpose of selling it to the complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the complainant’s mark.
The Complainant claims that the Respondent could not have ignored AIR FRANCE’s international reputation at the time it registered the disputed domain name, especially by the registration with the gTLD “.flights”. As an airline trademark, AIR FRANCE is entirely within the scope of business referred to by this thematic gTLD. It is obvious that Respondent has registered the disputed domain name <airfrance.flights> precisely because it knew the well-known character of the trademark AIR FRANCE.
Further, the trademark AIR FRANCE is registered in the Trademark Clearinghouse; consequently, the Respondent received, just before the validation of the registration of the disputed domain name, a notification of the registration of this label as a trademark. Despite this warning of existing rights and unavailability of this disputed domain name, the Respondent registered the disputed domain name knowingly, and even it registered this disputed domain name precisely because of its strong reputation.
It is very likely that the Respondent registered this disputed domain name with the idea of selling it to the Complainant. The disputed domain name was registered a few days after the release of several domain names listed on the “Name Collision List”, on which list was <airfrance.flights>. This implies that the Respondent kept a close eye on the up-to-date information about the gTLD “.flights” and was fully aware of the Complainant and its business. Such behavior should be considered as bad faith registration pursuant to paragraph 4(b)(i) of the Policy.
The Respondent has registered other domain names that infringe a third party’s trademark right, for example, <arte.paris> and <torreeiffel.paris>. The Respondent seems to be engaged in a pattern of conduct of bad faith registrations.
Furthermore, Respondent uses a WhoIs proxy service to keep private its personal identity. The Complainant acknowledges that the use of such privacy is not inherently evidence of bad faith. Nevertheless, when such concealment is used to escape one’s legal responsibility, it might then confirm a fraudulent intention. Having considered the previous points about bad faith and lack of rights or legitimate interests, the Complainant claims that the concealment of the Respondent’s identity should be construed as a fraudulent maneuver demonstrating its bad faith registration.
There is no doubt that Respondent registered the disputed domain name in bad faith.
(2) Bad Faith Use
The current visible use of the disputed domain name is a holding page from the Registrar. The Complainant contends that such use of the disputed domain name <airfrance.flights> constitutes bad faith use, as “passive holding”.
The apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Combined to supplemental circumstances as the Complainant’s well-known trademark and bad faith registration of the disputed domain name, as demonstrated above, the Complainant claims that the disputed domain name is being used in bad faith.
All these surrounding circumstances support the idea that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, many of these surrounding circumstances are disturbing the Complainant’s online presence:
- by tarnishing its brand image with a neglected activation displaying no explanation for the
Internet users;
- by preventing the legitimate owner of the trademark rights on the wording AIR FRANCE to
register a highly relevant domain name to its own business.
As a consequence, the Complainant claims that the Respondent is undoubtedly not making any good faith use of the disputed domain name. Considering these elements, the Respondent is definitely not using the disputed domain name in good faith.
On April 27, 2016, the Respondent sent an informal communication to the Center stating:
“Hi about the domain: airfrance.flights
I'll return it to Air France, please tell me the steps to follow”
The Respondent has not submitted a formal response to the Complaint.
The Panel notes the Respondent’s apparent willingness to transfer the disputed domain name to the Complainant. For completeness, the Panel discusses the Policy elements in turn below.
The principal part of the disputed domain name <airfrance.flights> is a letter-by-letter reproduction of the Complainant’s trademarks. The gTLD “.flights”, like any other gTLD, is not of distinguishing effect and is typically to be ignored in comparing a trademark to a domain name under the Policy. In addition, it rather strengthens the confusing similarity in this case. The gTLD “.flights” belongs, as described by its registry Donuts, to the theme of travelling, and, combined with an airline trademark, may reinforce the confusion with the Complainant, which is an internationally-known airline company.
The Panel concludes that the disputed domain name is identical, or at least confusingly similar, to the trademark AIRFRANCE, which the Complainant owns.
In establishing the second requirement of the UDRP (Policy, paragraph 4(a)(ii)), it suffices for the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. If the Complainant does so, the burden of production shifts to the Respondent to show that it has such a right or legitimate interest. (Comservice SA v. Mdnh Inc., Brendhan Height, WIPO Case No. D2010-1591, citing section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edtion (“WIPO Overview 2.0”).)
The Respondent is not related in any way to the Complainant’s business: it is not one of its agents and does not carry out any activity for, or have any business with the Complainant. The Respondent is not currently and has never been known under the wording “Airfrance” or “Air France”. No license or authorization has been granted to the Respondent to make any use of the Complainant’s trademark or apply for registration of the disputed domain name <airfrance.flights>.
The holding page that is displayed under the disputed domain name is not used for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use.
The Respondent, not having provided any substantive response to the Complaint, has failed to rebut the prima facie case of the Complainant.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name <airfrance.flights>.
The Complainant’s trademark AIRFRANCE is internationally widely-known, and the Respondent should have known its reputation at the time it registered the disputed domain name. Combined with the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name, this alone is sufficient to establish that the disputed domain name was registered in bad faith.
The web page under the disputed domain name only shows the following text: “Welcome to airfrance.flights This name was just registered on Uniregistry.com Want your own domain name? With new generic domain extensions like .link, .gift, .pics and .sexy, you have millions of new possibilities. Search for your new name below.” It also has a search box with the text “Search for a domain name” and a “Go” button. With a name or a word in the search box, the “Go” button leads the viewer of the website to a price list of domain names comprising the name or the word.
Considering the notoriety of the Complainant, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel also finds that the use by the Respondent of the disputed domain name disturbs the Complainant’s online presence and brand image with by leading Internet users to a website that appears to have no connection with the Complainant, displaying no explanation for the Internet users, and by preventing the Complainant, the legitimate owner of the trademark AIRFRANCE, from registering a domain name that is highly relevant to its own business. Moreover, the Panel notes that the Respondent’s apparent willingness to “return” the disputed domain name to the Complainant may be considered indicative of the Respondent’s bad faith.
Considering all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <airfrance.flights> be transferred to the Complainant.
Keiji Kondo
Sole Panelist
Date: July 11, 2016