WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Eastern-Aerospace
Case No. D2003-0138
1. The Parties
The Complainant is Société Air France, 45 rue de Paris, 95747 ROISSY CDG Cedex of France, represented by MEYER & Partenaires of France.
The Respondent is EASTERN-AEROSPACE, 32 Hollywood Road, Central 0000, AU HONG KONG of China.
2. The Domain Name and Registrar
The disputed domain name <airfrance-skyteam.com> is registered with Melbourne IT Ltd. D/B/A trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2003. On February 25, 2003, the Center transmitted by email to Melbourne IT Ltd. D/B/A trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 26, 2003, Melbourne IT Ltd. D/B/A trading as Internet Name Worldwide transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 20, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on March 26, 2003. 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 one of the worldís major airline companies based in France and tracing its origins back to 1933. It is the third largest international passenger carrier and the fourth largest freight carrier. It also ranks second worldwide for aircraft maintenance.
The Complainant offers the largest medium-haul network in Europe today in terms of daily flights: 1,700 daily flights to 200 cities in 85 countries, including Hong Kong and Australia. During the year 2001/2002 43,3 million passengers flew on flights operated by the Complainant. The Complainant is currently employing more than 49.000 persons worldwide and its turnover for 2001/2002 is close to 12.5 billions of Euros.
The Complainant is the registered owner of a large number of trademarks consisting of or including the words "AIR FRANCE" in a great majority of countries in the world.
The Complainant has websites under several domain names, e.g. <www.airfrance.com>, <airfrance.com.hk>, and <airfrance.com.au>.
The Complainant is one of the founders of the Skyteam Alliance since 2000 featuring currently six major international airlines, including in addition to the Complainant: Delta Airlines, Aero Mexico, Czech Airlines, Alitailia and Korean Airlines.
Skyteam Alliance is serving 174 millions passengers annually, and is the first airline alliance in terms of non-stop flights between the USA and European destinations. The alliance has a website at <www.skyteam.com>.
Guardant Inc. is the holder of the trademark SKYTEAM worldwide Guardant Inc. has not joined this proceeding.
The Complainant has the right to use the name SKYTEAM, that is registered in its French Certificate of Registration as a business name.
On November 8, 2002, the Complainant was informed that a company called Eastern Eurospace had registered the domain name <airfrance-skyteam.com> on September 25, 2002.
This domain is currently not active as a website.
Through its trademark attorney, the Complainant sent a formal letter on December 12, 2002, asking Eastern Aerospace to cease and desist from any unauthorized use of the domain name <airfrance-skyteam.com> and to assign it to the Complainant.
The Complainant received an answer to this letter by e-mail dated December 14, 2002. The e-mail was sent by Mr. David Edwards, whose electronic address was in the WHOIS for <airfrance-skyteam.com> domain name under the name of Emily Yuen, administrative contact.
Mr. Edwards stated that:
"airfrance-skyteam.com domain site is not intended to be used at present to infringe any right to anyone but this domain remains and will stay according to international laws the full property of Eastern Aerospace ltd. However if your client is interested to deal this domain name, we remain at you own disposal".
By e-mail dated January 24, 2003, the Complainantís trademark attorney sent a reply where Mr. Edwards was asked to be more explicit about the offer to deal the domain name.
On January 27, 2003, Mr. Edwards sent an answer, stating that:
"Domain name airfrance-skyteam.com is available for a deal. We agree on our side that through a costly and long term Court Procedures, your client will certainly get this domain name. However, and with a reasonable offer from you, we are willing to sell your client this domain name."
On February 11, Mr. Edwards sent an e-mail to the Complainantís trademark attorney informing that he had received an interesting offer from a Bahamas Company for the domain name <airfrance-skyteam.com>. Mr. Edwards concluded that he would transfer the domain to this company after 15 days if he got no answer from the Complainant.
5. Partiesí Contentions
AIR FRANCE is the trade name of the Complainant used in commerce since 1933.
Complainantís trademark AIR FRANCE is well and widely known throughout the world and easily recognizable as such.
The Complainant claims that its trademark is entirely reproduced in the domain name <airfrance-skyteam.com>.
The Respondent has combined two famous trademarks to reflect the membership of the Complainant in the Skyteam Alliance, as it is widely known by the public worldwide since the launch of this global alliance in 2000. Complainant claims that the domain name has to be considered confusingly similar to its trademarks.
The Complainant claims that the Respondent has no right or legitimate interests in respect of the domain name <airfrance-skyteam.com>. The Respondent is not currently and has never been known under the name AIR FRANCE, nor its combination with the trademark SKYTEAM which is owned by Guardant Inc.
The Complainant together with the other members of the Skyteam Alliance grant that they did not know the Respondent before it registered the domain name
<airfrance-skyteam.com>. The Complainant ascertains that Respondent is not in any way related to its business, is not one of its agents and does not carry out any activity for or has any business with it. The Complainant has never given any authorization to the Respondent nor Mr. David Edwards, nor Ms Emily Yuen to make any use, nor apply for registration of the domain name in issue. The Respondent has not engaged in any action that shows it has legitimate interest. On the contrary, as regards to the e-mails sent to the Complainant, it is of evidence that the only interest shown by Respondent in the registration and the use of the domain name was to sell it to the Complainant for an amount in consideration in excess of the out-of-pocket costs relating to the domain name registration. The domain name is not currently being used by Respondent as a website nor has it ever been used by him, even in a non commercial way or fair use.
The Complainant claims that the Respondent has engaged in bad faith registration and use of the domain name <airfrance-skyteam.com>. The trademark AIR FRANCE has a strong reputation and a widely known character throughout the world. It is also of evidence that the Complainant is making a wide use of the trademark SKYTEAM in the course of its business since three years, even on Internet. The use of the combination of the trademarks AIR FRANCE and SKYTEAM can be observed on both AIR FRANCE and SKYTEAM web portals. The SKYTEAM logo appears on every AIR FRANCE website. Respondent could not ignore the existing link between AIR FRANCE and the global Alliance Skyteam at the time he applied for the registration of the domain name. The Respondent refused to assign amicably the domain name to the Complainant, then offered to negotiate the domain name. The Respondent is aware of its attempt to the Complainantís trademark rights as he admitted that the Complainant would get the domain through a costly and long term court procedure. The attempts to make a deal ascertains the bad faith registration of the domain name. There is no demonstrable use or preparation for use of the domain name in connection with a bona fide offering of goods or services by the Respondent. Respondentís passive holding of the domain name constitutes bad faith.
The Complainant requests the domain name be transferred to its benefit.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The first question is whether the Complainant has rights in the trademarks AIR FRANCE and SKYTEAM.
The Complainant has registered a number of trademarks containing the words AIR FRANCE cf. annex M to the Complaint.
The word SKYTEAM is registered as a trademark. The Skyteam Alliance in which the Complainant is a member uses this trademark. The Complainant, as a member of the Skyteam Alliance, has the right to use SKYTEAM. The Complainant also has the right to use SKYTEAM as a business name cf. Annex O to the Complaint. The Panel therefore finds that the Complainant has rights in the trademark SKYTEAM.
The second question is whether the domain name <airfrance-skyteam.com> is identical or confusingly similar to the trademarks AIR FRANCE and SKYTEAM.
It is likely to believe that the domain name <airfrance-skyteam.com> refers to a commercial relationship between the domain name and each of the trademarks AIR FRANCE and SKYTEAM. There is no doubt that the domain name at issue, by embodying the whole of the two word trademarks, are confusingly similar to each of them. In this assessment the Panel finds support in previous decisions, and reference is made to D2001-0148 regarding the domain name <audi-lamborghini>.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a) of the policy.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to apply for any domain name consisting of Complainantís marks.
The Respondent has made no use of the domain name as a website. The names AIR FRANCE and SKYTEAM do not relate to the Respondent or any activity carried on by him. The Respondent has provided no explanation for the registration of the domain name.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant must prove both that the domain was registered in bad faith and is being used in bad faith.
The first question is if the Respondent has registered the domain in bad faith. The Panel finds that there is no proof that the Respondent conducts any legitimate commercial or non-commercial business activity. Given the Complainantís numerous trademark registrations for, and widely known reputation in the word AIR FRANCE and the Complainantís and the Skyteam Alliance members extensive use of the word SKYTEAM, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <airfrance-skyteam.com>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. The Panel concludes that the domain name <airfrance-skyteam.com> is registered by the Respondent in bad faith.
The second question is if the Respondent is using the domain name in bad faith.
According to the Uniform Policy paragraph 4(b)(i) lists circumstances which shall be evidence of the registration and use in bad faith. One of these circumstances is that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name.
The e-mails from the Respondent to Complainantís trademark attorney as cited above under section 4 makes it evident that the Respondent has primarily registered the domain name for the purposes as mentioned in this provision.
In all the circumstances of the case the Panel concludes that the Respondent is acting in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <airfrance-skyteam.com> be transferred to the Complainant.
Peter G. Nitter
Date: April 9, 2003