WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Air France v. Van Wijk & Mesker Holding BV

Case No. D2002-0028

 

1. The Parties

The Complainant is Société Air France, with registered office at Roissy CDG, Cedex, France.

The Complainant is represented by Mr. Patrick Meyer, trade mark agent with Meyer & Partenaires, with offices located at Bureaux Europe - 20, Place des Halles, 67000 Strasbourg, France.

The Respondent is, according to the Internic WHOIS database, Van Wijk & Mesker Holding BV, with offices located at Cimburgalaan 82 bis, Breda 4819 bd, the Netherlands.

The Respondentís Technical Contact is VeriSign, Inc., with offices at 21355 Ridgetop Circle, Dulles, VA 20166, USA.

 

2. The Domain Name and Registrar

The disputed domain names are <airfrance-delta.com> and <airfrance-delta.net>.

Network Solutions, Inc., with registered office at 505 Hunter Park Drive, Herndon, VA 20170-5142, USA, is the Registrar.

 

3. Procedural History

The procedural stages of the administrative proceeding are the following:

a. The Complainant filed its Complaint in electronic format on January 14, 2002, and by mail on January 16, 2002. This Complaint has been filed against Van Wijk & Mesker Holding BV (hereinafter: "the Respondent"). The Acknowledgement of Receipt of the WIPO Arbitration and Mediation Center ("WIPO") dates from January 16, 2002.

b. On January 17, 2002, WIPO addressed a Request for Registrar Verification to Network Solutions, in order to confirm, amongst others, that the specified domain names are registered with this Registrar and that the Respondent is the current registrant of the domain names.

c. On January 21, 2002, VeriSign-Network Solutions, Inc., with registered offices at 505 Hunter Park Drive, Herndon, VA 20170-5142, USA, confirmed that the domain names had been registered through its services, and that the Respondent is the current registrant of the disputed domain names. According to VeriSign-Network Solutions, Inc, the Respondent, in its Registration Agreement, has submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.

d. Further to this, on January 22, 2002, WIPO completed a Formal Requirements Compliance Checklist, confirming that all formalities have been taken into account.

e. On January22, 2002, the Notification of Complaint and Commencement of Administrative Proceeding was addressed to the Respondent by WIPO.

f. On February 15, 2002, WIPO transmitted notification to Respondent of its default in responding to the Complaint addressed on January 22, 2002. On February 15, 2002, WIPO received the following message from Respondent, in the name of Mr. Ruud Mesker:

"there is no dispute"

g. On February 19, 2002, WIPO transmitted Respondentís e-mail of February 15, 2002 to Complainant per e-mail, and requested Complainant to clarify whether it wished the proceeding to be terminated.

h. On February 20, 2002, Complainant acknowledged receipt of WIPOís e-mail, per facsimile and per e-mail, and informed WIPO that the dispute between Complainant and Respondent has not been settled. Complainant also requested WIPO to continue the proceedings.

i. On February 20, 2002, WIPO responded to Complainantís e-mail of February 20, 2002, holding that WIPO will proceed with the case. The message from WIPO was also communicated to Respondent, who responded on the same day with the following e-mail message:

"you better make it easy to transfer".

j. On February 26, 2002, the undersigned transmitted the Statement of Acceptance and Declaration of Impartiality and Independence to WIPO.

On February 27, 2002, the notification of Appointment of Administrative Panel was sent to both Complainant and Respondent. WIPO notified the Panel that, absent exceptional circumstances, the date scheduled for the Panel to render a decision, is March 13, 2002.

k. The Panel has not received any requests from Complainant or Respondent regarding further submissions and the Panel has not found it necessary to request any further information from the parties.

l. The proceeding has been conducted in English.

 

4. Factual Background

- The Complainant has submitted copies holding an overview of the trademark portfolio regarding the trademark "AIR FRANCE" (Exhibits I.1-7). The aforementioned trademarks are registered for different classes of goods and services in a variety of countries, such as France, Germany, Austria, China, the Benelux, Spain, the Russian Federation, Italy, etc. More specifically, the trademark "AIR FRANCE" was respectively registered on February 18, 2000 in France (Exhibit I 3) and on February 22, 1996 in the other countries, such as the Benelux countries, following an international registration (Exhibit I 5).

- Complainant states that these trademarks are valid. The validity of Complainantís trademark registration for "AIR FRANCE" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of valid trademark registrations for "AIR FRANCE".

- Furthermore, Complainant argues that the name "AIR FRANCE" has been used by Complainant as a trade name since 1933, and is a well-known and famous trade mark. Finally, Complainant also uses the domain names <airfrance.com>, <airfrance.fr> and <airfrance.nl> (See Exhibit G).

- The disputed domain names were registered on October 19, 1999, and renewed on October 3, 2001, by Respondent. According to the Registrar, Respondent is the registered owner and the Administrative Contact of the disputed domain names.

- After having discovered that (part of) "AIR FRANCE" was registered as domain names in the ".com" and ".net" gTLDs, the Complainant sent a proof of default by registered mail and e-mail, via its representative, to Respondent on September 6, 2001. A Copy of this proof of default, sent by Complainantís representative, is submitted to the Panel as Exhibit K1.

- On September 6, 2001, the Respondent replied to the aforementioned registered letter by e-mail, and holds the following:

"sorry, but this is not the way to ask us to do something. please come with a better idea. we are pointing to nothing and we can keep this if we want without a problem. you know that. we have not offered you this or someone else.

rudi mesker."

- Presently, the disputed domain names are not used, and a message holding "still under construction" is displayed upon access of the web-site(s).

- Registrar confirms, in its e-mail of January 21, 2002, that the Policy approved by ICANN on October 24, 1999, applies to the disputed domain name. This Policy requires that domain name registrants submit to a mandatory administrative proceeding by an approved dispute resolution service provider, such as WIPO. Respondent has not contested that it is properly before the Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainantís representative states that Complainant is one of the worldís most important airline companies, that has entered into a strategic alliance with, amongst others, Delta Airlines, a major US airline company. Complainant is the holder of a famous trademark registered worldwide for different classes of goods and services. More specifically, Complainant states that it holds the rights to:

- "AIR FRANCE", French nominative trademark nį 1 703 113 of October 31, 1991 (on renewal) for all classes of 1957 Nice Agreement (Exhibit I.2);

- "AIR FRANCE", French nominative trademark nį 99 811 269 of October 6, 1999, in 32 classes of Nice Agreement and especially in class 38 for Internet services (Exhibit I.3);

- "AIR FRANCE" nominative trademark registered in the United States on August 2, 1955, under nį 0610072 (Exhibit I.4);

- an International figurative trademark registration "AIR FRANCE + stripy device" nį 649075 in January 5, 1996; (Exhibit I.5);

- A Benelux figurative trademark registration "AIR FRANCE + winged horse" nį 158 674 in December 30, 1987, with first use in 1933; (Exhibit I.6); and

- A Benelux figurative trademark registration "AIR FRANCE + stripy device" nį 061415 in December 30, 1987, with first use in 1976. (Exhibit I.7)

The Complainant further holds that the disputed domain names, registered by Respondent, are confusingly similar to the trade mark of Complainant. Complainant argues that its trade mark is a well-known and famous mark, and submits a judgment of the Tribunal de Grande Instance de Paris wherein such Court held that "AIR FRANCE" is a famous and well-known trade mark.

Complainant further argues that Respondent has no legitimate interest to use the disputed domain names, because:

- Respondent has not and is not known under the name "AIR FRANCE", "DELTA" or a combination of both names;

- Respondent is not active in the airline business;

- Respondent never received authorization from Complainant to register and/or use the domain names; and

- Respondent has never used the domain names.

Complainant supports the view that, by registering the disputed domain names, such registrations were performed in bad faith. More specifically, the Complainant argues that this bad faith behavior can be deduced from the fact that:

- The trademark held by Complainant is world famous;

- Respondent operates in the area of tourism and traveling;

- Respondent thus was or must have been aware of Complainantís engagement with Delta Airlines;

- Respondent refused to co-operate after having received a proof of default from Complainant on September 6, 2001 (Exhibits K1 and K2);

- Respondentís "passive" behavior regarding the domain names, constitutes bad faith behavior.

Complainant requests that the domain names <airfrance-delta.com> and <airfrance-delta.net> be cancelled.

B. Respondent

The Respondent only replied, on September 6, 2001, to Complainantís contentions held in its registered letter of the same date, by stating the following:

"sorry, but this is not the way to ask us to do something. please come with a better idea. we are pointing to nothing and we can keep this if we want without a problem. you know that. we have not offered you this or someone else.

rudi mesker."

Furthermore, Respondent responded to WIPOís e-mail of February 20, 2002, holding that WIPO will proceed with the case, with the following e-mail message:

"you better make it easy to transfer".

 

6. Discussion and Findings

Paragraph 4(a) of the Policy distinguishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief.

These elements are that:

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

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

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

It is essential that the dispute resolution proceedings respect the due process requirements. That means that Respondent must have received adequate notice of proceedings initiated against it, and a reasonable opportunity to respond. In the present case, the Panel considers that WIPO took all the necessary steps to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

The Respondent has defaulted in providing an adequate response to the allegations of Complainant, and that allows the Panel to draw some conclusions on the basis of Complainantís undisputed allegations.

(i) The Complainant is the owner of the trademark "AIR FRANCE", which clearly follows from the exhibits I.1-7 submitted to the Panel. Further, the Panel is of the opinion that this trademark is a famous trademark.

The domain names registered by Respondent contain an element, which is identical to Complainantís registered trademark, to which a generic top-level domain name ".com" and the word "DELTA" are added. This addition does not eliminate any risk of confusion with the trademark of Complainant, but on the contrary suggests that this domain name refers to the French airline company. This risk of confusion is enhanced by the combination with the name "DELTA", which undoubtedly refers to the airline company Delta Airlines with which Complainant has a partnership.

In earlier WIPO decisions on such an adjunction of names, Panelists discouraged "opportunistic combinations of two famous trade marks, registered shortly after a merger announcement" [1]. Furthermore, the Panel decided in the case of <vivendiseagram.com> and <vivendiuniversal.com> that "Each of the disputed domain names incorporates in full the "Vivendi" mark, in combination with either the "Universal" or "Seagram" marks and, thus, are confusingly similar to the Complainantís marks." [2] (see also the <chevron-texaco.com> case [3]).

Complainant therefore met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to the trademarks owned by Complainant.

(ii) There is no evidence on the record that indicates that Respondent has any rights or legitimate interests in the disputed domain names. Indeed the Respondent only registered the domain names and does/did not actually use these domain names. Hence, a bona fide offering of goods and services could not be established.

Furthermore, Respondent is not commonly known as an individual, business or organization by the domain names.

Finally, Respondent is not making a legitimate commercial or fair use of the domain names, because it can mislead consumers by offering on-line travel ticketing, without having acquired any license or permission from Complainant, which is the legitimate owner of the trade mark "AIR FRANCE".

The Respondent has not engaged in any action that shows it has a legitimate interest.

In light of the aforementioned, the Panel decides that the Respondent has no rights or legitimate interests in the disputed domain names.

(iii) Considering the third element, the registration and use in bad faith, the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (paragraph 4(b)). For example, a person or entity who 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, commits bad faith registration, provided he/it engaged in a pattern of such conduct, in accordance with Paragraph 4 (b)(ii) of the Policy. Furthermore, a domain name registration is also registered in bad faith, if the registrant registered such domain name primarily for the purpose of disrupting the business of a competitor, in accordance with Paragraph 4(b)(iii). Finally, the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location, is considered use in bad faith.

In response to Complainantís request to cease the use of its registered trademark "AIR FRANCE", sent by registered letter and e-mail on September 6, 2001, Respondent states "Ö please come with a better idea.". Although this answer is unclear, if not confusing, it might be interpreted as suggesting that Complainant should make an offer to pay for the transfer of the domain names. Besides, it can be deduced from the absence of any justification for the registration of the domain names, that Respondent has thus registered and used the domain names in bad faith.

Additionally, a Panel already decided in <guinessbeer.com> [4] that the notoriety of a Complainantís mark 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 Complainantís mark. Though the domain name does not presently resolve to a website this is a case where the concept of passive use referred to in the Telstra-case WIPO Case No. D2000-0003 is applicable."

Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith.

The Complainant thus established the three elements necessary to conclude that Respondent has engaged in abusive domain name registration.

 

7. Decision

Based on its findings that the Respondent has engaged in an abusive registration of the domain names <airfrance-delta.com> and <airfrance-delta.net> within the meaning of Paragraph 4(a) of the Policy, the Panel directs the Registar to cancel the domain names.

 


 

Alain Strowel
Sole Panelist

Dated: March 13, 2002

 


Footnotes:

1. WIPO Case No. D2000-0717 Vivendi SA/Seagram Company Ltd./Universal Studio Inc v. Yu Fu Zhao; WIPO Case No. D2000-0446 Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc.

2. See WIPO Case No. D2000-0717 Vivendi SA/Seagram Company Ltd/Universal Studio Inc v. Yu Fu Zhao.

3. WIPO Case No. D2001-1142 Chevron Corporation v. Young Wook Kim.

4. WIPO Case No. D2001-0020 "Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo", regarding <guinessbeer.com>