WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Air France v. The World of Travel

Case No. D2002-0485

 

1. The Parties

The Complainant is Société Air France, Roissy, France.

The Respondent is The World of Travel, London, United Kingdom.

 

2. The Domain Names and Registrar

The domain names at issue in these proceedings are <lastminute-air-france.com>, <lastminute-air-france.net>.

The Registrar is easyspace.com

 

3. The Proceedings

The Complainant filed the complaint on May 24, 2002. A request for registrar verification was sent on May 27, 2002. Various e-mails were exchanged :

SUBMISSION DATE

DESCRIPTION

May 28, 2002

E-mail from the Respondent to the Complainant

May 31, 2002

Notification of Complaint and Commencement of Administrative Proceeding

May 31, 2002

E-mail from the Respondent

June 3, 2002

E-mail from the Center to the Respondent

June 3, 2002

E-mail from the Respondent

June 3, 2002

E-mail from the Complainant

June 3, 2002

E-mail from the Respondent

June 5, 2002

E-mail from the Respondent to the Center

June 14, 2002

E-mail from the Respondent to the Center

June 20, 2002

E-mail from the Center to the Complainant

June 25, 2002

E-mail from the Complainant to the Center

The Panel was appointed on July 16, 2002.

 

4. The Partiesí Contentions

A. Complainantís Contentions

In its complaint, the Complainant contends that it owns more than 4í000 trademarks in many countries of the world, approximately 1í200 of which consist of or include the words "Air France". In the United Kingdom alone, Air France owns more than 30 trademarks including the said words "Air France".

Complainant further states that the trademark Air France is well known throughout the world, and that ordinary courts of law already so decided in a number of cases, including a case involving a British subject; Complainant further cites the WIPO Cases No. D2002-0028 (<air-france-delta.com>) and No. D2000-1677 (<airfrance-delta.net>).

Respondent just added <lastminute>, but otherwise entirely reproduced the mark air france in the domain names at issue. However, the addition of the word "lastminute" does not eliminate any risk of confusion with the trademark of Complainant, but on the contrary suggests that the said domain names refer to the French airline company.

Moreover, even for non-English readers and especially French native speaking people, the word "lastminute" is very well understood as a word which has something to do with low-cost travel. As a matter of fact, because of the success of the last minute tripís business, Lastminute.com purchased in 2000 the biggest French discounter company named Degriftour.fr, which is specialised in low-costís reservation.

Lastminute sealed a business alliance with one of the most watched TV Channel in France named "Metropole TV M6". Thus, the word "lastminute" is very well-known in France to be the usual one to designate a certain kind of services in the field of tourism, and specifically low cost and charterís trips. So this word combined with the word "Air France" automatically connotes in the consumerís mind that Air France is offering some lastminute trips on the designated web sites.

Nevertheless, Complainant tries on the contrary to suggest to its clients a complete and high-qualityís scale of services and to establish a privileged relationship with them.

Therefore, Complainant claims that the confusion which is created in the consumerís mind has to be considered as an infringement to its brand image.

Further, Complainant wants to point out that the risk of confusion between the designated domain names and the société Air France is increased because Respondent operates in the travel industry.

The existence of a dash is of no relevance, according to Complainant, which cites WIPO Cases No. D2000-0396 (<laurent-perrier.com>) and No. D2000-1677 (<cocacoladrinks.com>).

Finally, Complainant stresses that besides the identity or confusingly similarity of the domain names at issue with its trademarks, Respondent has no right or legitimate interests in respect of those domain names. Moreover, the notoriety of the Complainantís marks creates a presumption that Respondent registered the domain names for the purpose of selling them to Complainant or to use them in some way to attract users for commercial gain.

Through its trademark attorney, Complainant sent a formal letter on October 24, 2001 asking Respondent to cease and desist from any unauthorized use of the domain names at issue and of the domain name <lastminute-air-france.org>, a domain name which was then registered in the name of Respondent but no longer is; Complainant also requested Respondent to cancel the said domain names.

Respondent answered to this letter by e-mail and ordinary mail, and asserted that he would not convey the domain names to Complainant.

B. Respondentís Contentions

The Respondent acknowledged in one e-mail that he had "now taken sites off transfer" and he was "asking easyspace to delete the names" from himself (e-mail of May 28, 2002).

Then, on June 3, 2002, Respondent wrote that he was "sorry about [his] misunderstanding of domains on October 24, 2001. [He] was only trying to end this dispute and be friends, nothing more". Further on June 5, 2002, Respondent wrote that

"I was prepared to transfer my domain names to them. However, although they acknowledged my emails they are still proceeding. What else does Société Air France want me to do, as I have complied with what they wanted, that is to cancel / transfer the domain names to them. As from what I know, it isnít illegal to possess a domain name, as I obtained mine from easy-space. Why doesnít Société Air France put proceeding against them for allowing me to purchase these domain names ?"

Finally, Respondent did agree for the case to be decided by a single Panelist, but did not forward any further response.

 

5. Discussion and Findings

A. Identity or Confusing Similarity of Complainantís Trade Marks and Domain

Names at Issue

There is no doubt that the domain names at issue, by embodying the whole word trademarks of complainant, are confusingly similar to those trademarks. The addition of <lastminute> does not prevent the confusion of the consumers and travel industry members. Although <lastminute> is also the trade name of a U.K. company specializing in low fare travels and may have acquired a secondary meaning in that respect, <lastminute> is mainly a generic set of terms which precisely indicates the opportunity to book at the very last moment and to benefit from the rebates that are usually connected with such bookings. Now, to add a generic wording to a well-known trademark does not alleviate the risk of confusion, at least when the generic words are semantically related to the business of the trademark owner (see WIPO Case No. D2002-1677, <cocacoladrinks.com>). The same will be said in relation with the dash between Air and France in the domain name at issue.

Finally, it is of no relevance that the domain names at issue do not use capital letters for Air and for France, as Internet users are used to the complete disregard of the ordinary rules for capitalization.

B. No Rights or Legitimate Interests of Respondent

The Respondent does not allege rights or legitimate interests in respect of the domain name at issue. On the contrary, it acknowledges the better rights and legitimate interests of Complainant, which settles this question.

C. Registration and Use in Bad Faith

Respondent obviously knew the better rights and legitimate interests of Complainant at the time when it registered the domain names at issue. Not only are the "Air France" trademarks world famous, but Air France is allegedly the worldís third largest international passenger carrier. 42,4 millions of passengers flew on flights operated by Air France during the year 2000/2001 when Respondent first registered the domain name. Respondent does not allege and would not be heard asserting that it ignored the trademark, although it is active since 1991 in the travel industry.

Further, the use of the domain name is on two active web sites, on which there appears to be several hyperlinks and advertisements for the Respondent.

Moreover, Respondent has even put a clip-art picture taken from Complainantís web site (<www-airfrance.com>) to illustrate its own web site (www.the-world-of-travel.com). This is tantamount to unfair competition and, probably, to copyright infringement, although the matter need not be decided here. In any case, this clip-art picture has now been removed from its web site by Respondent.

All this points to a willful attempt to attract consumers through the use of the world-known trademark of Complainant. Bad faith registration and use are obvious.

 

6. Decision

By application of Para. 4 (a) of the ICANN Policy, the Panel concludes that the domain names at issue are confusingly similar to the Complainantís trademarks, that the Respondent has no rights or legitimate interests in respect of those domain names, and that those domain names were registered in bad faith. Therefore, the Panel orders that the domain names be cancelled.

 


 

François Dessemontet
Sole Panelist

Dated : July 30, 2002