The Complainant is Société Air France of Roissy, France, represented by MEYER & Partenaires, France.
The Respondent is Jerry Amuno, J.Skylimit Publishing of South Pasadena, California, United States of America, self-represented.
The disputed domain name <airfrance.deals> (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent sent emails to the Complainant and to the Center on February 21, 2018. The Center notified the Parties that it was proceeding to Panel appointment on March 16, 2018.
The Center appointed Michael D. Cover as the sole panelist in this matter on March 20, 2018. 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 passenger and freight airline, which has been using the “Air France” name since 1933. The Complainant has been known under its current name since 1997, when it merged with Air Inter. The Complainant has a fleet of 583 aircraft, serving many countries throughout the world. The Complainant later combined with another airline, KLM. In 2015, the resulting group carried more than 79 million passengers and had annual revenues of EUR 26.05 billion.
All that is known about the Respondent is set out in the Registrant details for the Disputed Domain Name. However, there was an exchange of emails between the Complainant and the Respondent in late 2017, following the sending on behalf of the Complainant of a cease-and-desist letter relating to the Disputed Domain Name, in which the Respondent offered to sell the Disputed Domain Name to the Complainant for a “fair price”. This led the Complainant to propose a price of USD 70, which would have equated to the Respondent’s registration fees for the Disputed Domain Name. This offer was not taken further by the Respondent.
The Disputed Domain Name was registered on May 21, 2015 and does not resolve to any active website.
The Complainant notes that it is owner of many trademarks consisting of or including the wording AIR FRANCE. These include International trademark registrations and also trademark registrations in the United States of America.
The Complainant also operates, so states the Complainant, an international web portal at “www.airfrance.com”, which has been operating since 2004.
The Complainant submits that its trademark AIR FRANCE is well-known and has been so recognized by previous UDRP decisions.
The Complainant submits that the Disputed Domain Name is confusingly similar to its trademark AIR FRANCE. It notes that the addition of generic Top-Level Domains (“gTLD”), such as “.deals” is to be ignored in comparing its trademark to the Disputed Domain Name. It also notes that the Disputed Domain Name reproduces its trademark in its entirety.
The Complainant concludes that the Disputed Domain Name is confusingly similar to the Complainant’s trademark AIR FRANCE.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It notes that the Respondent is not in any way related to or an agent for the Complainant. The Respondent is not known and has never been known under the name “Air France”, says the Complainant, and has never been authorized to make use of the Disputed Domain Name.
The Complainant notes that the Disputed Domain Name remains unused since its registration on May 21, 2015 and that this passive holding cannot be considered a bona fide offering of goods and services nor legitimate noncommercial or fair use.
The Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant notes the strong reputation and character of its trademark AIR FRANCE and its submissions on this point have already been mentioned in this Decision. It submits that the Respondent could not have ignored the Complainant’s trademark AIR FRANCE when registering the Disputed Domain Name and that an inference should be drawn in the case of such a well-known trademark as AIR FRANCE that the Disputed Domain Name was registered for the purpose of selling it to the Complainant or a competitor of the Complainant or that it was intended to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s trademark.
The Complainant draws the Panel’s attention to the fact that the Respondent is the owner of a number of other domain names, such as <airarabia.deals> and <aircanada.deals>, and that this points to a pattern of behavior of bad faith registration of domain names in the airline sector.
The Complainant concludes that the Disputed Domain Name was registered and has been used in bad faith. The Complainant points both to the passive holding of the Disputed Domain Name and the offer to sell the Disputed Domain Name referred to earlier in this Decision.
The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.
As already noted, there were some exchanges between the Complainant and the Respondent, including an offer by the Respondent to delete or transfer to the Complainant the Disputed Domain Name. These did not reach a conclusion.
In addition, on February 20, 2018, the Respondent forwarded to the Center an email sent to the Complainant, where the Respondent stated that it was willing to not renew the Disputed Domain Name after its expiration, and that it could also transfer the Disputed Domain Name to the Complainant.
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel accepts that the Complainant has established registered and common law rights in its AIR FRANCE trademark. The trademark has been in use for many years, in fact for over 80 years, and the Complainant has accordingly established common law rights in its AIR FRANCE trademark. It has also been a registered trademark since at least 2003. The revenue figure submitted by the Complainant for 2015 shows a substantial business conducted under the AIR FRANCE trademark.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to the Complainant’s trademark AIR FRANCE. It is well established that the addition of generic or descriptive material or the addition of gTLD or other non-distinctive element is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark AIR FRANCE, in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name. The Panel notes that the Complainant has not permitted or licensed the Respondent to use the AIR FRANCE trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the Complainant’s AIR FRANCE trademark when it registered the Disputed Domain Name in 2015. There has been no noncommercial of fair use of the Disputed Domain Name and no bona fide offering of goods and services; quite to the contrary, there has been passive holding of the Disputed Domain Name. The Respondent has not been commonly known by the Disputed Domain Name, so that route is not available to the Respondent.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.
The Panel accepts the submissions of the Complainant under this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. It is inconceivable that the Respondent could have had any legitimate reason to adopt and register the Dispute Domain Name, which contains, as it does, the entirety of the well-known trademark of the Complainant, AIR FRANCE.
The passive holding of the Disputed Domain Name constitutes bad faith use under these circumstances and the Panel also finds that, on the balance of probabilities, the Respondent was only too well aware of what he was doing, not least against the background of the Respondent holding domain names incorporating the trademarks of other well-known airlines. The offer to sell the Disputed Domain Name also is taken by the Panel, on the balance of probabilities, as indicating that the Respondent had registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.
Finally, the fact that the Respondent, after receiving the Notification of Complaint, offered to transfer the Disputed Domain Name confirms the Panel’s findings that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and only registered it in order to capitalize on its trademark value.
The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
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.deals> be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: April 6, 2018