The Complainant is Société Air France of Roissy, France represented by MEYER & Partenaires, France.
The Respondent is Khaja Uddin of New Buffalo, Michigan, United States of America.
The disputed domain name <airfrancebooking.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2012, 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 October 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2012.
The Center appointed Andrew Brown QC as the sole panelist in this matter on December 7, 2012. 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 disputed domain name <airfrancebooking.com> was first registered on January 6, 2012.
The Complainant, based in France, is one of the world’s major airline companies. It states that its origins trace back to 1933. The Complainant is the registered proprietor of (inter alia) the following trademark registrations for AIR FRANCE which predate registration of the disputed domain name, and which it relies on:
- International trademark registration no. 828334 for the semi-figurative trademark AIR FRANCE filed 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 and 45;
- Community Trademark (“CTM”) registration no. 002528461 for the word mark AIR FRANCE filed on January 9, 2002 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 and 45;
- United States trademark registration no. 0610072 for the word mark AIR FRANCE filed on August 2, 1955 in class 39; and
- French trademark registration no. 99811269 for the word mark AIR FRANCE filed on May 15, 2008 in classes 9, 16, 18, 25, 28, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
The Complainant states that it operates an international web portal at “www.airfrance.com”. It is the registered owner of the following domain names incorporating the trademark AIR FRANCE together with a descriptive word. These domain names were transferred to the Complainant by way of previous UDRP proceedings:
- <airfrancereservation.com> which currently points to the Complainant’s French web portal at <www.airfrance.fr>;
- <airfrancebooking.info> which currently points to the Complainant’s British web portal at <www.airfrance.co.uk>; and
- <air-france-bookings.com> which also currently points to the Complainant’s British web portal at <www.airfrance.co.uk>.
The Complainant notes that the decision of a previous UDRP panel has recognized that the Complainant has rights in the trademark AIR FRANCE, registered for numerous goods and services in multiple jurisdictions, and that the Complainant’s mark is recognized as a well-known mark (see Société Air France v Spiral Matrix, WIPO Case No. D2005-1337).
Evidence shows that, as at the date of the Complaint, the disputed domain name was being used to host a commercial search engine in the form of an online booking service. Internet users using that search engine were directed to webpages displaying commercial offers in the field of tourism and online travel ticketing including a connection to competitors of the Complainant. A similar search engine also hosted at the disputed domain name directed Internet users to a new window displaying numerous hyperlinks resolving to websites connected with the field of tourism and travel including those of competitors of the Complainant.
The homepage of the website resolved to from the disputed domain name predominantly displayed the AIR FRANCE trademark. The website also contained photographs and other imagery which the Complainant states was sourced from the Complainant’s website including a photograph of flight crew wearing Air France uniforms.
The Respondent is the owner of several other domain names that reproduce well-known trademarks of third parties in combination with a descriptive word, including:
- <bookabentey.com> registered on February 5, 2008.
- <emiratesbooking.org> registered on April 19, 2010.
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has registered rights in the trademark AIR FRANCE as at the relevant date by way of its registered trademarks for that mark in numerous classes. Although for the purposes of paragraph 4(a)(i) the Panel looks to the Complainant’s rights on the date the Complaint was filed (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.4), in fact the Complainant’s rights in the trademark long predate January 6, 2012 when the disputed domain name was registered. The Complainant’s mark was also well-known as at that date: Société Air France v Spiral Matrix, WIPO Case No. D2005-1337.
The Panel considers that the Complainant’s AIR FRANCE registered trademark is instantly recognizable within the disputed domain name and the descriptive element “booking” does not sufficiently differentiate the disputed domain name from the Complainant’s mark so that confusion will not arise. Rather, the text “booking” serves to accentuate the likelihood of confusion by bringing to mind the Complainant’s services (which include the booking of flights).
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations 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; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Complainant states and the Panel accepts that it has never given the Respondent any licence or authority to use, or apply for the registration of, the disputed domain name, and that the Respondent is not related in any way to the Complainant’s business.
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The disputed domain name is not similar to the Respondent’s name, and there is no evidence that the Respondent operates any business under a name that is similar to or the same as the disputed domain name.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant has trademark registrations for AIR FRANCE which predates the date of registration of the disputed domain name, namely January 6, 2012. The mark AIR FRANCE was also well-known globally as at that date. The Panel finds that the Respondent must have been aware of the Complainant’s trade mark and business at the time it registered the disputed domain name. The inclusion of the word “booking” in the disputed domain name demonstrates that the Respondent was targeting the Complainant’s well-known trademark and supports this conclusion.
The Panel is therefore satisfied that the disputed domain name was registered in bad faith.
The Panel’s finding in this regard is further supported by (but not dependent on) the Respondent’s history of registration of domain names which comprise a well-known trademark belonging to other trade mark owners and a descriptive word (including <bookabentley.com> and <emiratesbooking.org>).
The Panel is also satisfied that the disputed domain name is being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. A search engine posted on the homepage of the website hosted at the disputed domain name is clearly marked with the Complainant’s trademark AIR FRANCE and includes a photograph obtained from the Complainant’s website. The search engine directs Internet users to a webpage containing offers for the services of competitors of the Complainant. There is therefore a demonstrated intent to attract Internet users looking for the Complainant’s website to the Respondent’s website for commercial gain.
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, “<airfrancebooking.com>” be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Date: December 19, 2012