WIPO Domain Name Decision: D2007-0143

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Societé Air France v. MSA, Inc.

Case No. D2007-0143

1. The Parties

The Complainant is Société Air France, Roissy CDG Cedex France, represented by MEYER & Partenaires, France.

The Respondent is MSA, Inc., California, United States of America. [It is to be noted that the true identity of this Respondent was not available to the Complainant until after the Complaint had been filed, as the registrant’s true identity was concealed by Moniker Privacy Services, who were identified as the nominee registrant on the public Whois record.]

2. The Domain Name and Registrar

The disputed domain name <airfrancesuck.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007, identifying the Respondent as Moniker Privacy Services. The Complaint was received in hardcopy by the Center on February 6, 2007. On February 7, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 21, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response identifying the Respondent registrant’s true identity as MSA, Inc., and providing the contact details for the administrative and technical contact. Upon notification, the Complainant filed an amendment to the Complaint on February 26, 2007, specifying MSA, Inc. as Respondent. The Center verified that the Complaint together with the amendment to 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 February 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2007.

In the interim, noting that the Domain Name registration was due for renewal on March 31, 2007, the Center had sought confirmation from Moniker Online Services on February 23, 2007, that the Domain name could be renewed by the Complainant under the provisions of Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy. Moniker Online Services responded on February 28, 2007, inviting the Complainant to contact them to ensure renewal of the Domain Name registration, and on March 6, 2007, the Complainant confirmed that it would renew the Domain Name in due time.

The Center appointed Keith Gymer as the sole panelist in this matter on April 5, 2007. 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, Société AIR FRANCE, is one of the world’s major airline companies, tracing its origins back to 1933. The company operates an international web portal at “www.airfrance.com”. It has also registered several generic and country code top-level domain names consisting of or incorporating the trademark AIR FRANCE. For example:

<airfrance.fr>: Complainant’s French webportal;

<airfrance.us>: Complainant’s American webportal;

The Complainant is the registered owner of a large number of trademarks consisting or including the wording “AIR FRANCE” in many countries throughout the world.

The Complainant is, for example, the registered owner of trademarks in France, and in the United States of America, where the Respondent is supposedly established.

AIR FRANCE, French nominative trademark n° 1, 703, 113 of October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001;

AIR FRANCE American nominative trademark registered on August 2, 1955 as US 610,072.

The Respondent, MSA, Inc., was identified as the registrant of the Domain Name only after the filing of the Complaint. Prior to that, the Respondent’s true identity was concealed behind Moniker Privacy Services as nominee registrant on the public Whois record.

According to the updated Whois record the Domain Name <airfrancesuck.com> was registered on March 31, 2005, with MSA, Inc. named as registrant and as administrative, billing and technical contact.

5. Parties’ Contentions

A. Complainant

The Complainant made substantial submissions in support of the Complaint. Relevant, selected and edited extracts are reproduced below:

Société Air France Rights in Trademark AIR FRANCE

The Complainant is the registered owner of a large number of trademarks consisting or including the wording “AIR FRANCE”.

Société Air France is for instance the registered owner of trademarks in France and in the United States:

AIR FRANCE, French nominative trademark n° 1, 703, 113 of October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001;

AIR FRANCE United States of America nominative trademark registered on August 2nd, 1955 as US 610,072.

Anyway, the Complainant’s trademark “AIR FRANCE” is well and widely known throughout the world and easily recognizable as such. Several Courts of Justice and Administrative Panels have already recognized the well-known character of the trademark “AIR FRANCE”.

So did Panels in previous UDRP cases. See for example:

Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 <airfrancesucks.com>: ”In this case the contested domain name consist of the well known trademark AIR FRANCE and the addition of the generic term “sucks”.

Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337 <airfranceflights.com>: “The Complainant has rights in the mark AIR FRANCE registered for numerous goods and services in multiple jurisdictions. Complainant’s mark is not only registered and used in the course of trade in numerous countries, but also recognized as a well-known mark. This was confirmed in several WIPO cases, which stated that Complainant has used the mark AIR FRANCE extensively and that the mark has acquired considerable fame and recognition.”

As a consequence, it should be indisputably considered that the trademark AIR FRANCE owned by the Complainant is not only registered and used in commerce in great majority of countries in the world, but is well-known in the sense of article 6 bis of the Paris Union Convention.

Identity or Confusing Similarity of the Domain Name with the Trademark AIR FRANCE

In the present case, Société Air France claims that the domain name <airfrancesuck.com> is confusingly similar to its trademark AIR FRANCE.

First, the trademark AIR FRANCE is entirely reproduced in the disputed domain name.

The combination of the trademark AIR FRANCE with the wording “suck” does not eliminate the risk of confusion with the Complainant’s famous trademark AIR FRANCE, which is the only distinctive element of the domain name in dispute.

As to case law, the mere addition of a generic or descriptive term to an otherwise distinctive or well-know trademark does not serve to distinguish the domain name from the complainant’s trademark. See for instance:

Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337 <airfranceflights.com>: “In particular the terms “reservation” and “flights” are clearly generic in the industry in which Complainant is active”

Société Air France v. Domain Active Pty Ltd, WIPO Case No. D2004-0993 <airfrancereservations.com>: “The domain name at issue is confusingly similar to the trademark AIR FRANCE”.

Second, the domain name combines the Complainant’s famous trademark with the suffix “suck”: “suck” is an English word used in slang to denigrate something or somebody, to indicate a disapprobation with, a negative advise, more generally criticism.

Numerous similar cases of domain names comprising well-known trademarks followed by the wordings “sucks”, “blows” or “boycott” have been considered under the Policy. In most of these cases, Panels have concluded that the domain names were confusingly similar to the Complainant’s trademark. More particularly, see:

Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 <airfrancesucks.com>: The incorporation of a well known trademark in its entirety as the first and dominant part of a domain name is confusingly similar to this trademark regardless of whether the additional elements are pejorative as in this case or of a more neutral kind such as “airfrancetickets”.

The Complainant would like to point out that even if some internet users will treat the additional term “suck” as a pejorative term and would therefore perhaps be able to dissociate it after all from the Complainant, not all internet users are English speaking (AIR FRANCE is the French national airline company) or familiar with the use of “suck” in English slang. Consequently, others will be unable to give the domain name any very definite meaning and will be confused about the potential association with the Complainant. See for example:

Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 <airfrancesucks.com>: The Panel is fully aware that there is a split among the UDRP decisions regarding whether a “-sucks” domain name is confusingly similar to the trademark to which it is appended. The majority of the decisions have found confusing similarity. In a minority of decisions, and in some dissenting opinions, Panelists have deemed a “-sucks” addition to a well-known trademark to be an obvious indication that the domain name is not affiliated with that trademark owner. This Panel, however, concurs with the notion that every case must be assessed on its own merits, and the Panel agrees with the remarks by the Complainant, and which has also been stated in previous decisions under the UDRP, that far from all international customers are familiar with the pejorative nature of the term “sucks”, and that a large proportion of internet users therefore are likely to be confused by “-sucks” domain names. See inter alia Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596.

The Complainant wants to specify that it is not opposed to freedom of speech. To express its disagreement or opposition with something, someone or a company is one of the fundamental rights of human beings.

Registering domain names in the form of COMPANY NAME + PEJORATIVE TERM.COM to provide for example a forum for critical commentary is not uncommon, and is part of an Internet phenomenon known as “cybergriping”.

Such is not the case here.

Indeed, the domain name <airfrancesuck.com> is used by the Respondent to divert Internet users to webpages on which several hyperlinks are displayed consisting exclusively of results in the field of tourism and travel. By clicking on these hyperlinks, users are directed to competing third-party commercial websites.

Such use does not appear to constitute any genuine non-commercial use for the purpose of criticism of the brand but on the contrary seeks the confusion with the Complainant’s well-known trademark in order to generate revenue. Considering that, the Respondent’s argument which would consist on saying that the disputed domain name was registered in order to be run as a freedom expression website is not admissible.

The Complainant claims that the confusion, which is created in the consumer’s mind, has to be considered as an attempt to damage? its brand image.

As a consequence, the Complainant claims that the domain name <airfrancesuck.com> is confusingly similar to its trademark AIR FRANCE.

Respondent has no Rights or Legitimate Interests in Respect of The Domain Name

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 has any business with it.

The Respondent is not currently and has never been known under the wording AIR FRANCE nor under the combination of this trademark with the suffix “suck”.

No licence or authorization has been granted to the Respondent to make any use, nor apply for registration of the domain name <airfrancesuck.com>.

In similar circumstances, Panels decided that the Respondent had neither rights nor legitimate interests in issuing domain names.

The Complainant claims that the domain <airfrancesuck.com> has been registered by Respondent in order to take advantage of the Complainant’s well-known trademark to confuse and divert Internet users to competing websites in the field of tourism and travel through a “pay per click” domain parking solution.

Such use is not a bona fide offering of goods or services under Policy 4(c)(i), or a non-commercial or fair use under Policy 4 (c)(iii).

Such use does not constitute any genuine non-commercial use for the purpose of criticism of the brand nor to protest in any way with the business practices of the Complainant.

See for example:

Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 <airfrancesucks.com>: The Respondent is not a dissatisfied customer, a dissatisfied employee or an organisation representing such interests. Respondent is a commercial entity who has put forward no prima facie legitimate reasoning for the registration. Further, the domain name was at the time of filing of the Complaint used to redirect to a Pay-Per- Click Provider. Accordingly, the Panel finds that Policy Paragraph 4(a)(ii) has been satisfied.

As a matter of fact, the Respondent has not engaged in any action that shows it has right or legitimate interests in the disputed domain name.

It results therefore that the Respondent should not be considered as having rights or legitimate interests in respect of the domain name <airfrancesuck.com>.

BAD FAITH REGISTRATION AND USE:

It is difficult to imagine that the Respondent could have ignored the well-known trademark AIR FRANCE at the time he applied for registration of the confusingly similar domain name <airfrancesuck.com>.

Société Air France has previously demonstrated the strong reputation and the widely known character of its mark Air France throughout the world for a long time.

In similar cases, 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 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 Complainant’s mark” (see for example Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo WIPO Case No. D2001-0020 <guinessbeer.com>).

According to previous case regarding <guinessbeer.com> and the prima facie presumption, the Complainant claims that the Respondent could not ignore Air France’s international reputation at the time it registered the disputed domain name.

Moreover, the fact that the disputed domain name combines the Complainant’s famous trademark AIR FRANCE with the suffix “suck” ascertains the Respondent’s bad faith registration. Indeed, what is qualified in the domain name is the term “AIR FRANCE” which is the Complainant’s trademark. The word “suck” has only one interest in focusing the attention on the AIR FRANCE trademark.

In registering the domain name at stake, there is no doubt that Respondent wanted to refer to the Complainant.

The Respondent has registered this domain name precisely because he knew the well-known character of the trademark AIR FRANCE, for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and divert Internet users to other websites in the field of tourism and travel through hyperlinks.

The Complainant points out that tourism creates an important traffic on the Internet. By registering the disputed domain name, the Respondent expected to take financial advantage of this paying business.

This combination of facts is asserting the bad faith registration of the domain name <airfrancesuck.com> by the Respondent.

The Complainant further contends that the Respondent’s operating of the domain name <airfrancesuck.com> constitutes bad faith use.

The Respondent uses the disputed domain name to divert Internet users to a parking webpage on which several hyperlinks are displayed consisting exclusively of results in the field of tourism and travel.

By clicking on these hyperlinks, users are directed to competing third-party commercial websites

These hyperlinks generate revenue to the benefit of the Respondent through a “pay per click” domain parking solution. Considering that, it is obvious that the Respondent is intending to realize material benefits by diluting the fame and renown of the Complainant’s trademark.

Whatever, the Respondent’s argument, which would consist on saying that activity of the domain name was not controlled by it, but due to a parking program or any other affiliation program is not admissible.

Indeed, it is now established that “even if such use commonly occurs on so-called “parking” pages, Respondent has a responsibility for the content Respondent allows to be posted at the site (see for example Hewlett Packard Company v. Alvaro Collazo, NAF Claim No. FA0302000144628; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417).

The Respondent is obviously not making any legitimate non-commercial or fair use of the disputed domain name because such use could mislead consumers by offering competing services, without having acquired any licence or permission from the Complainant, which is the legitimate owner of the trademark “AIR FRANCE”.

The Complainant claims that this use of the domain <airfrancesuck.com> has to be considered as unfair competition.

In such circumstances, Panels decided in earlier cases that the Respondent uses the domain name at stake in bad faith:

Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 <airfrancesucks.com>: It also seems apparent from the above findings that Respondent registered and has used the domain name to disrupt Complainant’s business. It disrupted Complainant’s business by redirecting traffic to what appeared to be competitive products and services, and thereby confusing Complainant’s customers whether satisfied or dissatisfied. Further, Respondent has obtained or at least expected to obtain some commercial gain, either by selling links to Complainant’s competitors, selling advertising space, or by through the “pay per click” being paid to stop using the derogatory domain names.

At last, using the tarnishing domain name <airfrancesuck.com> to activate webpages with hyperlinks that point to competing third-party commercial websites has to be considered as a denigration of the Complainant’s well-known trademark.

As a consequence, the Respondent is undoubtedly not making any good faith use of the disputed domain name.

For all these reasons, the Respondent has engaged in bad faith registration and use of the domain name <airfrancesuck.com>.

The Complainant asks that the disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not offer any explanation or response to the Complainant’s contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the name and mark AIR FRANCE. By way of formal proof, the Complaint has provided factual evidence of longstanding trademark registrations.

The question, therefore, is whether the addition of the pejorative term “suck” in the Domain Name <airfrancesuck.com> avoids this Domain Name being considered confusingly similar to AIR FRANCE or not.

The Panel is aware that some other Panels have found the addition of obviously offensive terms like “sucks” to an otherwise familiar trademark is sufficient to render the composite domain name formed from the combination <trademark+sucks.com> not confusingly similar to the trademark at issue. The present Panel accepts that an ordinary user, familiar with the English language, is unlikely to expect that a domain name comprising the word “suck” or “sucks” appended to a familiar trademark would be operated by the trademark owner. However, that does not mean that the composite domain name can never be “confusingly similar” to the trademark at issue.

The Complainant has pointed out that not all users are familiar with English. In this case, the Complainant is a French business. It is conceivable that a user from France or some other country unfamiliar with English might assume that “suck” had a different meaning or was perhaps an acronym for a type of business (like “GmBH”, or “S.A.”, for example) and that others might even perceive the Domain Name as “Air Frances Uck”.

More realistically, as the Complainant has also observed, the key point is that, regardless of the meaning of “suck”, the distinctive element of the Domain Name is the trademark AIR FRANCE, which will be recognized by search engines as such. In the context of the Internet, therefore, which is where Domain Names have use and value, it is quite clear to the Panel that the Domain Name <airfrancesuck.com> will benefit from online searches for “Air France” because of the public recognition of the Complainant’s name and mark. And if search engines can be confused by such uses – and they may well disregard non-distinctive, or descriptive, suffices such as “suck” or “flights” (to use another example quoted by the Complainant) then, in this context, the Panel considers that it is eminently reasonable to argue that the Domain Name is confusingly similar to the Complainant’s trademark. Indeed, the evidence of the manner in which the Domain Name is being used serves to confirm that this Domain Name has been adopted by the Respondent with the intention to benefit from online confusion which can arise from the incorporation of the AIR FRANCE mark as the leading and distinctive element of the Domain Name, irrespective of whether or not the English meaning of the appended word “suck” is intelligible to the human reader. The Panel therefore finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

In this case, the evidence, unchallenged by the Respondent, clearly shows that the Respondent has no licence or implied permission from the Complainant to use the AIR FRANCE mark in the Domain Name. Obviously also, the Respondent is not itself commonly known by the Domain Name.

Paragraph 4(c)(iii) provides for consideration of possible “legitimate noncommercial or fair use” of a disputed domain name. In relation to “sucks” or “suck” cases and the like, as the Complainant has acknowledged, use of a Domain Name like <airfrancesuck.com> might be considered legitimate fair use, if it were for a genuine criticism site. In such event, the Panel would in applicable circumstances, certainly be prepared to hold that use of the Domain Name was not objectionable under the Policy.

However, as the evidence demonstrates, that cannot be said in the present case. Rather, the evidence is that the Domain Name is being used blatantly as a click-through revenue generator for the Respondent with travel-related links being automatically provided for that purpose regardless of any association of such links with the Complainant or not.

The Respondent itself has offered no explanation to justify any claim to legitimate or fair use of the Domain Name.

Consequently, the Panel accepts the Complainant’s submissions and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.

Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:

“(ii) [Respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

The Panel considers the example of paragraph 4(b)(iv) of the Policy most directly applicable in the present case. In this respect, the Panel finds the following factors persuasive:

- the deliberate action of the Respondent to conceal its true identity behind Moniker Privacy Services. The Respondent is apparently an incorporated business, not some potentially vulnerable private individual who might be the victim of persecution if their true identity were known. The Respondent’s deceit in this respect is not conduct indicative of any legitimate commercial enterprise.

- the misleading exploitation of the public recognition of the AIR FRANCE name and mark in the Domain Name for blatantly commercial purposes, and with a total disregard for the rights and interests of the Complainant in its mark, including by directing users away to competing services.

In the Panel’s view, the Respondent’s activities are manifestly abusive and unfairly exploit the Complainant’s goodwill and reputation. This is not a case where Air France “suck”, but one where, like a leech, it is the Respondent which can be said to be using the Domain Name to suck the goodwill and reputation out of the AIR FRANCE mark. Exploiting famous names and marks by using them in domain names in this parasitic fashion certainly cannot be considered to be a bona fide commercial practice.

The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.

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 <airfrancesuck.com> be transferred to the Complainant.

Keith Gymer
Sole Panelist

Dated: April 19, 2007