WIPO Arbitration and Mediation Center
Soci¨¦t¨¦ AIR FRANCE v. yicheng yao
Case No. D2008-0007
1. The Parties
Complainant is Soci¨¦t¨¦ AIR FRANCE, Paris, France, represented by MEYER & Partenaires, France.
Respondent is yicheng yao, Xi¡¯an, China.
2. The Domain Name and Registrar
The disputed domain name <airfrance-greaterchina.mobi> is registered with HiChina Web Solutions Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ¡°Center¡±) on January 3, 2008. On January 3, 2008, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On January 4, 2008, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that according to the information the Center received from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese and consequently, the language of the administrative proceeding shall be Chinese, Complainant filed a submission for English to be the language of the administrative proceedings on January 12, 2008. 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 January 15, 2008. The notification of Complaint and Commencement of Administrative Proceedings were in Chinese and English. Furthermore, Respondent has been informed that if he is experiencing language difficulties with the Complaint, he is requested to indicate this to the Center no later than January 22, 2008. Respondent responded on January 16, 2008, to the Center indicating that he has difficulties with English and requested for the matter to be resolved and mediated in Chinese. The Center informed that parties on January 16, 2008, that Respondent appears to be willing to negotiate with Complainant regarding the possible settlement and that the parties may wish to consider communicating directly with each other with a view to settling the matter amicably. In view of the proposition that Respondent is willing to settle this litigation in an amicable way, Complainant submitted a Request for Suspension of proceedings on January 21, 2008. The Notification of Suspension of Administrative Proceeding was sent out to the parties on January 21, 2008 by the Center and the administrative proceeding was suspended until February 4, 2008. On February 5, 2008, Complainant put in a Request for the reinstitution of the Administrative Proceedings. The Center duly notified the Respondent on the reinstatement of administrative proceeding and in light of Respondent¡¯s previously asserted objection to English being the language of proceedings, the Center requested Respondent to comment on whether or not it maintains its objections. All comments should be submitted to the Center by February 9, 2008. The Center did not receive any reply from Respondent on the issue of language of the Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2008. The Center further confirmed that it would (a) proceed with the Complaint as filed in English; (b) to accept a Response in either English or Chinese; (c) to appoint a panel familiar with both the English and Chinese language and that the panel would have the discretion to determine the language of proceedings. Respondent did not submit a formal Response.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on March 6, 2008. 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
Complainant is Soci¨¦t¨¦ AIR FRANCE. It is one of the world¡¯s major airline companies and has been established since 1933. Complainant is the registered owner of a large number of trade marks consisting of or including the word ¡°air france¡± in a number of countries in the world. Complainant is the registered owner of the following trade marks in France and the United States of America, but also in China:
– AIR FRANCE, French nominative trade mark no. 1,703,113 of October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001;
– AIR FRANCE French nominative trade mark no. 99, 811, 269 of September 6, 1999 in 32 classes of Nice Agreement and especially in class 38 for Internet services;
– AIR FRANCE nominative trade mark registered in the United States of America on August 2, 1955 no. 0610072, renewed on August 2, 1995;
– AIR FRANCE International nominative trade mark no. 828334C of October 20, 2003, registered in China.
Complainant is also the registered owner of several generic and country code top-level domain names consisting of or incorporating the trade mark AIR FRANCE including:
<airfrance.fr>; <airfrance.cn>; <airfrance.com.cn>; <airfrancegreaterchina.com>; <airfrance-greaterchina.com>; <airfrancegreaterchina.com.cn>; <airfrancegreaterchina.cn>; <airfrance-greaterchina.com.cn>; and <airfrance-greaterchina.cn>.
Complainant was informed that a person named ¡°yicheng yao¡± apparently located in China has registered the disputed domain name <airfrance-greaterchina.mobi> on August 30, 2007.
5. Parties¡¯ Contentions
Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark AIR FRANCE which it owns and has rights. The trade mark AIR FRANCE is reproduced entirely in the disputed domain name. Complainant asserts that previous WIPO UDRP decisions have ruled that the absence of space or hyphens in a disputed domain name added to the trade mark has to be ignored in assessing the question of identity or confusing similarity. Complainant cites British Airways Plc v. Cadmos LLC and Francis R Grenier, WIPO Case No. D2002-0612 (<britishairways.info>) and Soci¨¦t¨¦ Air France v. The World of Travel, WIPO Case No. D2002-0485 (<lastminute-air-france.com> and <lastminute-air-france.net>). Furthermore, Complainant contends that the inclusion of top-level domain extension has to be ignored in comparing a trade mark to a domain name.
Next, Complainant contends that the disputed domain name combines Complainant¡¯s famous trade mark AIR FRANCE with the suffix ¡°greaterchina¡±. For many years, Complainant activated an Asian dedicated web portal named ¡°air france greater china¡± at ¡°www.airfrance-greaterchina.com¡± and all Asian Internet users were displayed to their specific country website from this address. In fact, Complainant contends that the combination of the trade mark AIR FRANCE with the wording ¡°greaterchina¡± in the disputed domain name does not eliminate the risk of confusion with Complainant¡¯s famous trade mark AIR FRANCE. On the contrary, it increases the confusion as the consumer is aware of ¡°air france greater china¡± web portal past use and will think that Air France has activated a new website at ¡°www.airfrance-greaterchina.mobi¡±. The risk of confusion is also demonstrated by a search on the web through the web search engine Google and the results are exclusively related to Complainant and its Greater China¡¯s past web portal. Finally, the disputed domain name <airfrance-greaterchina.mobi> is identical to the domain name <airfrance-greaterchina.com> registered by Complainant since September 3, 2000.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
(a) Respondent is not related in any way to Complainant or its business;
(b) Respondent is not one of Complainant¡¯s agents and does not carry out any activity for, or has any business with it;
(c) Respondent is not currently and has never been known under the wording ¡°air france¡± nor ¡°airfrance greater china¡±;
(d) No licence or authorization has been granted to Respondent to make any use, nor apply for registration of the domain name <arifrance-greaterchina.mobi> by Complainant;
(e) The passive holding of the domain name is not a bona fide offering of goods or services and also not a non-commercial or fair use;
(f) Respondent has not engaged in any action that shows he has right or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered in bad faith on the following grounds:
– That Complainant¡¯s trade mark AIR FRANCE has a strong reputation and it is widely known throughout the world for a long time and that given the notoriety of Complainant¡¯s mark, it is not conceivable that Respondent was not aware of Complainant¡¯s trade mark;
– That in registering the disputed domain name, Respondent wanted to refer to Complainant because he knew the well known character of the trade mark AIR FRANCE as well as the past use of Complainant¡¯s Greater China web portal.
Complainant contends that the disputed domain name was used by Respondent in bad faith as evidenced by Respondent¡¯s passive holding of the disputed domain name and indeed, the disputed domain name points to an error page. Thus, it is clear that Respondent is not making any good faith use of the disputed domain name.
For all these reasons, Complainant contends that Respondent has engaged in bad faith registration and use of the disputed domain name.
Respondent did not submit a formal substantive Response to Complainant¡¯s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English.
Complainant has submitted a request that English should be the language of the present proceeding on the following grounds:
(a) the website of the registrar HiChina at ¡°www.net.cn¡± is operated by default in English and has an option in Chinese language;
(b) the disputed domain name <airfrance-greaterchina.mobi> is a domain name in Latin character;
(c) the naming ¡°airfrance-greaterchina¡± refers to Complainant Soci¨¦t¨¦ AIR FRANCE which is a foreign and European company;
(d) Respondent has not raised any objection to the proceeding being held in English, after he received Complainant¡¯s Complaint Transmittal email in English;
(e) the Center acknowledged receipt of the Complaint using communications in English and there was no objection from Respondent.
Complainant submits that the above circumstances point to the fact that Respondent is able to read in English, write in English and understand the English language.
Further, Complainant is not able to communicate in Chinese and if Complainant were to submit the Complaint in Chinese, the administrative proceeding will be unduly delayed and Complainant would have to incur substantial expenses for translation. All these factors suggest that the use of English would not prejudice Respondent¡¯s ability to defend itself in these proceedings and thus it would serve no useful purpose to insist on Complainant translating all its documents into Chinese when Respondent has shown no interests in participating in the procedure.
(i) The Panel¡¯s discretion under the Policy
Paragraph 11 of the Rules provides:
¡°Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.¡±
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel¡¯s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that the disputed domain name is in English – <airfrance-greaterchina.mobi>. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond formally to Complainant¡¯s allegations except for a short email response from one ¡°Ò¦Òæ³É¡± on February 26, 2008 long after the due date for Response on February 23, 2008. The email response from ¡°Ò¦Òæ³É¡± did not contain any substantial arguments and could not be considered a proper Response to Complainant¡¯s Complaint. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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 applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights in the AIR FRANCE mark in many countries such as France, United States of America and China.
In assessing the degree of similarity between Complainant¡¯s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant¡¯s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant¡¯s airline business.
The disputed domain name comprises (a) an exact reproduction of Complainant¡¯s trade mark AIR FRANCE, (b) the English words ¡°greater china¡± in one word after the word ¡°air france¡± which is connected by a hyphen, and (c) the top level domain suffix ¡°.mobi¡±. Complainant¡¯s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts Complainant¡¯s contention that the English words ¡°greater china¡± are non-distinctive and they do not provide additional specification or sufficient distinction from Complainant or its trade mark AIR FRANCE. In fact, the Panel finds that the addition of the words ¡°greater china¡± serves to emphasize the geographical location of Complainant¡¯s business which increases the level of confusion of Internet users as Internet users may mistake Respondent¡¯s website as Complainant¡¯s official website devoted to its customers in China. This confusion is further heightened by the fact that for many years, Complainant has operated an Asian dedicated web portal named ¡°air france greater china¡± at ¡°www.airfrance-greaterchina.com¡± and it is also the owner of domain names such as <airfrance.fr>; <airfrance.cn>; <airfrance.com.cn>; <airfrancegreaterchina.com>; <airfrance-greaterchina.com>; <airfrancegreaterchina.com.cn>; <airfrancegreaterchina.cn>; <airfrance-greaterchina.com.cn>; and <airfrance-greaterchina.cn>.
Accordingly, the Panel finds that the disputed domain name <airfrance-greaterchina.mobi> is confusingly similar to a trade mark or service mark in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP Panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut complainant¡¯s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word ¡°airfrance-greaterchina¡± in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the AIR FRANCE trade mark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its trade mark AIR FRANCE enjoy a worldwide reputation with regard to its airline business. Consequently, in the absence of contrary evidence from Respondent, the AIR FRANCE trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent¡¯s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website or other on-line location, by creating a likelihood of confusion with Complainant¡¯s mark as to the source, sponsorship, affiliation, or endorsement of Respondent¡¯s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
First, the Panel finds that Complainant enjoys a widespread reputation in its AIR FRANCE trade mark with regard to its airline business. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant¡¯s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the AIR FRANCE trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to submit a substantive response in this matter even though he was given notice of these proceedings in Chinese and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services. The Panel¡¯s conclusion that Respondent ought to have knowledge of Complainant¡¯s AIR FRANCE mark at the time of registration is further buttressed by the fact that Complainant has a substantial Internet presence as evidenced by the search results conducted via Google with the key word ¡°air france¡±. Anyone who conducts a simple search exercise will come to the conclusion that the trade mark AIR FRANCE or its related marks belong to Complainant. In this Panel¡¯s view, it is the duty of Respondent to undertake due diligence to ensure that the selection or choice of domain names does not infringe the intellectual property rights of third parties.
Second, Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website offering Complainant¡¯s products and services in the airline business. Given the widespread reputation of Complainant¡¯s AIR FRANCE trade mark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant¡¯s widely known and distinctive trade marks, intended to ride on the goodwill of Complainant¡¯s trade marks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website ¡°www.airfrance-greaterchina.mobi¡± is either Complainant¡¯s site specially designated for its business in China or the site of official authorized partners of Complainant, which it is not. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant¡¯s AIR FRANCE trade mark and this constitutes a misrepresentation to the public that Respondent¡¯s website is in one way or the other associated or connected with Complainant¡¯s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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-greaterchina.mobi> be transferred to Complainant.
Susanna H.S. Leong
Dated: March 20, 2008