WIPO Domain Name Decision: D2006-0437

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France and Koninklijke Luchtvaart Maatschappij v. MIC

Case No. D2006-0437

1. The Parties

The Complainants are Société Air France, Roissy, France and Koninklijke Luchtvaart Maatschappij, Amstelveen, The Netherlands, represented by Meyer & Partenaires, France.

The Respondent is MIC, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <flyingbluemiles.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2006. On April 6, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On April 7, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. It furthermore informed the Center that the domain name registration was set to expire on April 22, 2006. On request of the Center, BulkRegister.com confirmed that it will keep the domain name on Registrar Lock during the UDRP proceedings and will not delete it so that the Complainant in the dispute will have the option to renew or restore the name under the same commercial terms as the Registrant. 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2006.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on May 17, 2006. 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

A. The Complainants

The Complainants are Société Air France (Air France), one of the world’s major airline companies, and Koninklijke Luchtvaart Maatschappij (KLM), an important international airline company. Both companies form the Air France – KLM Group (they have announced their intended merger in 2003).

“Flying Blue” is the new joint frequent flyer program of the Complainants that has been officially announced on March 23, 2005, as evidenced by a copy of the respective press release.

The Complainants are the co-registered owners of a large number of trademarks consisting of or including the words “Flying Blue” in many countries worldwide.

In particular they are the owners of the following trademark registrations for a large number of goods and services in classes 9, 16, 35, 36, 38, and 39 of the International Classification:

- Community Trade Mark no. 4003489 of August 30, 2004, word mark FLYING BLUE;

- International registration no. 863317 of February 25, 2005, word mark FLYING BLUE, designating over 40 countries and in particular the United States, where the Respondent is located.

B. The Respondent

The Respondent registered on April 22, 2005, the domain name <flyingbluemiles.com> and uses it for a website that is offering “pay per click” links to competing websites. On that website, the domain name is also offered for sale.

5. Parties’ Contentions

A. The Complainants

The Complainants submit that in view of the large number of their passengers the trademark FLYING BLUE can be considered to have become well-known.

The Complainants submit that (A) the domain name <flybluemiles.com> is confusingly similar to its trademark FLYING BLUE in which they have rights; they point out in this connection that the domain name of the Respondent incorporates the trademark FLYING BLUE in its entirety and that the addition of the descriptive term “miles” cannot exclude confusing similarity; (B) the Respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name was registered and is being used in bad faith.

The Complainants request that the domain name <flyingbluemiles.com> be transferred to the Complainant Air France.

B. The Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <flyingbluemiles.com> consists of a combination of the Complainant’s trademark with the descriptive term “miles” (the gTLD “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). This term designates a distance-measuring unit, which in the field of airline transportation is also commonly used as an award measuring unit. “Flying Blue” members can earn and spend mileage points named “miles” on flights of the Complainants. Therefore the combination of the trademark FLYING BLUE with the term “miles” suggests to Internet users that the domain name <flyingbluemiles.com> refers to the mileage program of the Complainants. This shows that the addition of the term “miles” cannot exclude confusing similarity between the domain name and the trademark of the Complainants.

In conclusion the domain name <flyingbluemiles.com> is confusingly similar to the trademark FLYING BLUE of the Complainants.

B. Rights or Legitimate Interests

FLYING BLUE is not a descriptive term, in which the Respondent might have a legitimate user-interest. It is known as the trademark of the Complainant’s mileage program. The Respondent has no connection or affiliation with the Complainants, who have not consented to the Respondent’s use of the domain names.

Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name leads to a website with sponsored links to other websites. Even if the Respondent does not use its domain name to promote commercial activities of its own, the Panel is satisfied that providing a link to such websites cannot be considered to be non-commercial. It would make no sense for the Respondent to provide a link to a search site, if it were not to attract a fee, the more as such arrangements are common. Therefore the Respondent’s use of the domain name <flyingbluemiles.com> is commercial, but cannot be considered to be a bona fide offering of goods or services. Finally, for the same reason that the Respondent apparently does not promote its own commercial activities with the help of this domain name, the Respondent has not been able to become known under it.

In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

For a complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration of 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 mark or to a competitor for valuable consideration in excess of the respondent’s documented out-of pocket costs directly related to the domain name.

A generally applied test is therefore whether a respondent has attempted to sell the domain name for a sum in excess of the respondent’s out of pocket expenses in registering the domain name. The Panel is satisfied that this test is fulfilled.

As evidenced by the Complainants through a copy of the Respondent’s website, as used when the Complaint was submitted, the domain name <flyingbluemiles.com> is offered for sale. Visitors are invited to submit an offer to be considered by the Respondent. In the absences of any submission of the Respondent to the contrary the Panel has no doubt that the Respondent would sell the domain name only for an amount in excess of its out of pocket expenses for registering the domain name.

Paragraph 4(b)(iv) of the Policy lists as a further typical situation of evidence of registration and use in bad faith that, by using the domain name, 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 mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Complainants have submitted facts and evidence that the Respondent has also fulfilled the conditions set out in paragraph 4(b)(iv) of the Policy. There can be no doubt that the Respondent knew of the mileage program, offered under the Complainant’s trademark FLYING BLUE, when it registered the domain name. Otherwise the Respondent would not have chosen a combination of this trademark with the term “miles”.

Internet users, when typing the Respondent’s domain name, will expect to arrive at a website of the Complainants or at least a website somehow related to the Complainants. Therefore, by using the domain name for a website, that provides sponsored links to other websites, the Respondent attempts to attract Internet users for commercial gain to this website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Even where Internet users realize when they view the Respondent’s web page that it is not connected with the Complainants, the Respondent may still profit from their initial confusion, since they may be tempted to click on the sponsored links.

Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with references).

In conclusion, the Panel finds that the Respondent has registered and used the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <flyingbluemiles>, be transferred to the Complainant Société Air France.

Gerd F. Kunze
Sole Panelist

Dated: June 1, 2006