WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Registration Private, Domains By Proxy, LLC / albuquerque Albuquerque, hwuaye

Case No. D2019-0191

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“the United States”) / albuquerque Albuquerque, hwuaye of Belem, Para, Brazil.

2. The Domain Name and Registrar

The disputed domain name <air-france.site> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2019, 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 January 29, 2019 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 February 1, 2019.

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 February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2019.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 11, 2019. 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 is Société Air France, a French airline passenger and freight company. The company is one of the largest in the world. It was created in October 1933 as a result of 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 became Société Air France, the Complainant.

The Complainant has been a member of the Skyteam alliance since 2000.

In 2003 an alliance between the Complainant and KLM, created one of the Europe’s leading airline groups.

The disputed domain name was registered on November 25, 2018 and is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant has a fleet of 583 airplanes, serves 231 cities in 103 countries and has 1500 flights every day. In 2015, Air France-KLM group carried more than 79 million passengers and had a 26,05 billion Euros revenue.

The Complainant has an international web portal at “www.airfrance.com” in addition to the following websites:

- a web portal dedicated to its Nord American customers, this website is available at: www.airfrance.us;

- a web portal dedicated to its Portuguese customers, this website is available at: www.airfrance.pt;

Société Air France has also registered or reclaimed many generic Top-Level Domains (“gTLD”) formed with the trademark AIR FRANCE. Some of these are exclusively registered for a defensive purpose. All of these domain names redirect the Complainant’s customers to its institutional websites. For instance:

- <air-france.mobi>;
- <air-france.voyage>;
- <air-france.club>;
- <air-france.group>;
- <airfrance.site>

In December 2018, the Complainant was informed of the registration of the disputed domain name.

The Complainant states that the disputed domain name “is used to activate a webpage that reproduces the Complainant’s name, trademark and logotype and is impersonating the Company, pretending to offer airplane tickets to the user if he fills in a survey”.

The Complainant further states that:

1. The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;

2. The Respondent has no rights or legitimate interests in respect of the domain name;

3. The disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(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.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

A. Identical or Confusingly Similar

The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark AIR FRANCE:

First, because it is 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”.

Second, because the gTLD “.site” does not have an impact on the overall impression of the dominant portion of the disputed domain name: “…the mere addition of a Top-Level Domain to a well-known trademark does not give any distinctive character to the domain name, nor avoid confusing similarity”.

The Complainant refers to the UDRP decision in Société Air France v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2015-0443, where the panel stated that:

“The Complainant argues that the disputed domain name <airfrance.email> reproduces letter by letter the Complainant’s trade mark and is therefore identical to its trade mark. The use of the new gTLD “.email” like other gTLDs is not a distinguishing feature and should be ignored in comparing the trade mark to the disputed domain name. It is well established in prior WIPO UDRP decisions for example Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 which is referred to by the Complainant that the addition of a gTLD after a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trade mark.”

The Respondent had the opportunity to challenge the Complainant’s case but has not done so. The Panel is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant says that, as far as it is aware, the Respondent is not currently and has never been known under the name AIRFRANCE or AIR FRANCE or any potential combinations of those words, and that no license or authorization has been granted to the Respondent to make any use of or apply for registration of the disputed domain name.

The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent could not have ignored its international reputation at the time it registered the disputed domain name: “As an airline trademark, AIR FRANCE is entirely within the scope of business referred to by this gTLD. It is obvious that the Respondent has registered the disputed domain name precisely because he knew the well-known character of the trademark “AIR FRANCE” and the significant online traffic related to the topic of air travel.”

In addition, the Complainant notes that the Respondent “uses a WhoIs proxy service to keep private its personal identity. Complainant acknowledges that the use of such privacy service is not inherently an evidence of bad faith. Nevertheless, when such concealment is used to escape one’s legal responsibility, it might then confirm a fraudulent intention”.

The Complainant submits that the Respondent’s operation of the disputed domain name constitutes bad faith use:

“The respondent uses the disputed domain name to activate a website reproducing the trademark of the Complainant.

This website also displays an explicit html title in Portuguese language: ‘AirFrance - Ganhe uma passagem ‘rátis agora!’ which means ‘AirFrance - Win a free ticket now!’ in English…

The expression “BLACK FRIDAY’ is also displayed just below the complainant’s trademark as if the webpage was related to a promotional offer or to a special discount…no disclaimer is displayed on the said webpage. Nevertheless, the webpage displays a survey with the alleged possibility to win airline tickets for free. This creates an extremely high likelihood of confusion with the Complainant’s trademark to confuse consumers and disrupt the Complainant’s business and to ultimately collect personal information from individuals seeking to get an airline ticket for free.”

Furthermore, the Complainant notes that the web page activated by the disputed domain name <air-france.site> is used for phishing purposes in order to obtain personal information by deception.

In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <air-france.site> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist
Date: March 25, 2019