WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Daksh MAdan, Daksh

Case No. D2019-2193

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Daksh MAdan, Daksh, India.

2. The Domain Name and Registrar

The disputed domain name <airfrance-tickets.club> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 10, 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 September 12, 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 September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.

The Center appointed James Bridgeman as the sole panelist in this matter on October 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 a French airline passenger and freight company established in 1933 and is the owner of an international portfolio of registered trademarks for the AIR FRANCE mark including:

- International trademark AIR FRANCE No. 828334 registered 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, 45, with subsequent designation of the United States of America (“United States”);

- International trademark AIRFRANCE No. 1123935A registered on May 25, 2012 in classes 09, 16, 18, 35, 36, 37, 38 and 39, with subsequent designation of the Republic of Korea; and

- Indian trademark AIR FRANCE No. 1276424 registered under on April 15, 2005 in classes 35 (renewed and live).

The Complainant has an established online presence. It maintains a web portal located at the address “www.airfrance.com” for its airline services and is the owner of a portfolio of Internet domain names including <airfrance.flights>, <airfrance.online>, <airfrance.travel>, <airfrance.club>, <airfrance-ticket.com>, <airfrance-tickets.com>, <airfrance-ticket.us>.

The first named Respondent is a company providing WhoIs proxy and privacy services, located in Panama. The only information available about the second named Respondent is that provided in the Complaint, the Registrar’s WhoIs, and the information disclosed by the Registrar in response to the Center’s enquiry in this proceeding.

The disputed domain name <airfrance-tickets.club> was registered on July 30, 2019 and resolves to a website that purports to impersonate the Complainant by offering free airline tickets to Internet users to celebrate the Complainant’s 80th anniversary.

5. Parties’ Contentions

A. Complainant

Relying on the abovementioned portfolio of trademark registrations and its goodwill in the mark established by use in the airline industry since 1933, the Complainant submits that the disputed domain name is identical or confusingly similar to the AIR FRANCE trademark and service mark in which the Complainant has rights.

The Complainant submits that its reputation is global as it serves 231 cities in 103 countries with 1,500 flights every day. In 2015, Air France-KLM group carried more than 79 million passengers and had a EUR 26,05 billion revenue.

The Complainant claims that the disputed domain name is identical to, or at least confusingly similar to, the Complainant’s AIR FRANCE and AIRFRANCE trademarks, arguing that it is now well established 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” (Rolls-Royce PLC v. Hallofpain WIPO Case No. D2000-1709).

The Complainant states that the disputed domain name <airfrance-tickets.club> reproduces the Complainant’s trademarks AIRFRANCE and AIR FRANCE with the suffix “tickets”. The element “airfrance” in the disputed domain name reproduces letter-by-letter the Complainant’s trademarks and thus is identical to the said trademarks. The element “tickets” is a wording that is so frequent and trivial in the sphere of air travels that it just cannot add any inherent distinctive meaning in the disputed domain name <airfrance-tickets.club>. On the contrary the wording “tickets” is so evocative of the sphere of activity of airlines that it is very likely to aggravate the risk of confusion.

The Complainant adds that the generic Top-Level Domain (“gTLD”) “.club” has no distinguishing effect and should be ignored in comparing the trademark to the disputed domain name.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name <airfrance-tickets.club>, asserting that the Respondent is not related in any way to the Complainant’s business; the Respondent is not one of the Complainant’s agents; and the Respondent does not carry out any activity for, or have any business with the Complainant.

The Complainant states that the Respondent has never been known by the name Airfrance or Air France or “tickets” or any of their potential combination.

The Complainant asserts that has not given any license or authorization to the Respondent to make any use of or to apply for registration of the disputed domain name <airfrance-tickets.club>.

The Complainant argues that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.

The disputed domain name is used to activate a webpage in French language that impersonates the Complainant by reproducing the Complainant’s name, trademark and logotype and pretending to offer airplane tickets to the user if he/she fills in a survey. The Complainant submits that such use cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, the Complainant submits that it has made out the prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant submits that it has established the strong reputation and widely known character of its trademark AIR FRANCE throughout the world and for a long time.

The Complainant submits that because a number of UDRP panels have established under the Policy the notoriety of the Complainant’s trademark there is a prima facie presumption, that the Respondent could not have ignored AIR FRANCE’s international reputation at the time it registered the disputed domain name, especially by registering on the new gTLD “.club”. As an airline trademark, AIR FRANCE is entirely within the scope of business referred to by this thematic gTLD.

It is obvious that the Respondent has registered <airfrance-tickets.club> precisely because it was aware of the well-known character of the trademark AIR FRANCE and the significant online traffic related to the topic of air travel.

Furthermore, the Respondent takes advantage of a WhoIs proxy service to keep its personal identity private. The Complainant acknowledges that the use of such privacy services is not inherently 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 is using the disputed domain name to activate a website (in the French language) reproducing the trademark and device of the Complainant, together with a poor quality photo montage (with a low resolution and rotations of the letters “i” and “n” in the trademark AIR FRANCE).

The Complainant alleges that the Respondent is using the disputed domain name to unlawfully attempt to collect the personal data of the users while they link and share the lottery on WhatsApp through the website to which the disputed domain name resolves. The Complainant submits that this operation has disrupted the Complainant’s business and is unlawful as it is contrary to the European Union regulation that requires any provider to comply with its compulsory provision regarding the process of personal data (at least to provide information where personal data are collected).

Furthermore, the Complainant submits that this bad faith use of the disputed domain name creates a likelihood of confusion as to the Complainant’s affiliation or endorsement with the disputed domain name and allows the Respondent to profit from that confusion through the suspicious survey offered and the social media feedback that invariably harms the Complainant’s reputation.

The Complainant submits that the Respondent’s use of the disputed domain name misleads Internet users to believe that the website to which the disputed domain name resolves has been somehow endorsed or registered by the Complainant. This belief is prejudicial to the brand image of the Complainant and no explanation or disclaimer has been displayed on the web site.

The Complainant submits that the disputed domain name is being used in bad faith for phishing purposes for obtaining personal information by deception.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has provided convincing evidence that it has rights in the trademarks AIR FRANCE and AIRFRANCE acquired through its abovementioned portfolio of registered trademarks and its substantial international use of the AIR FRANCE and AIRFRANCE trademarks in association with its airline services for many years.

The disputed domain name consists of the Complainant’s trademarks in their entirety, a hyphen, the word “tickets” and the gTLD “.club” extension. The Complainant’s business name and trademark, AIR FRANCE and AIRFRANCE is the first and dominant element of the disputed domain name. The additional elements do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. The hyphen may be ignored in the context.

The word “tickets” is descriptive of the type of service that one might expect from an airline website and in the circumstances of the present Complaint the gTLD “.club” extension may be ignored for the purposes of comparison.

This Panel finds therefore that the disputed domain name is confusingly similar to the AIR FRANCE and AIRFRANCE trademarks in which the Complainant has rights and the Complainant has therefore succeeded in the first element of the test in Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name submitting that: the Respondent is not related in any way to the Complainant’s business; the Respondent is not one of the Complainant’s agents and does not carry out any activity for, or have any business with it; that the Respondent has never been known by the name AIRFRANCE or AIR FRANCE or “tickets” or any of their potential combinations; that the Complainant has not given any license or authorization to the Respondent to make any use of or to apply for registration of the disputed domain name <airfrance-tickets.club>; that in the circumstances, there is no actual or contemplated bona fide or legitimate use to which the disputed domain name could be put by the Respondent; and that the disputed domain name is being used to activate a webpage in French language that impersonates the Complainant by reproducing the Complainant’s name, trademark and logotype and pretending to offer airplane tickets to the user if he/she fills in a survey.

In the circumstances, it is well accepted by UDRP panels established under the Policy that the burden of production shifts to the Respondent to establish that it has such rights or legitimate interests. The Respondent has not filed any Response and therefore has failed to discharge this burden.

This Panel finds therefore that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore succeeded in the second element of the test in Policy, paragraph 4(a).

C. Registered and Used in Bad Faith

Given the international reputation of the Complainant, the similarity of the disputed domain name and the Complainant’s trademark, the fact that the Complainant has an established Internet presence and operates an airline booking service on its website, is improbable that the disputed domain name was chosen and registered without the registrant being aware of the Complainant, its business, tradename and website. In reaching this conclusion, this Panel notes that the website to which the disputed domain name resolves purports to impersonate the Complainant. This Panel finds therefore that the disputed domain name was on the balance of probabilities registered in order to take predatory advantage of the Complainant’s reputation and to mislead Internet users into believing that there is some connection between the disputed domain name and the Complainant.

The evidence shows that the disputed domain name is being used as the address of a website which purports to offer two of the Complainant’s tickets for free in celebration of its 80th anniversary and links to social media. This is in circumstances where the Respondent does not carry out any activity for or have any business with the Complainant.

On the balance of probabilities therefore, this Panel finds, as has been submitted by the Complainant that the Respondent’s website has been set up for the purposes of phishing, to collect data from Internet users who are seeking to access the Complainant’s services.

In the circumstances, this Panel finds on the balance of probabilities that, as alleged by the Complainant, the disputed domain name was registered in bad faith for the purpose of attracting Internet users to the Respondent’s website in order to take unfair benefit of Complainant’s reputation and goodwill and has since been used in bad faith by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site and of products offered on the Respondent’s web site.

The Complainant has therefore established the third and final element of the test in Policy, paragraph 4(a) and is entitled to succeed in this Complaint.

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 <airfrance-tickets.club> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: October 25, 2019