WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Pawan S. Jain, Airtickets India (P) Ltd.
Case No. D2008-0853
1. The Parties
Complainant is Société Air France, of Roissy Cedex, France, represented by MEYER & Partenaires, France.
Respondent is Pawan S. Jain, Airtickets India (P) Ltd., of New Delhi, Delhi India.
2. The Domain Name and Registrar
The disputed Domain Name <airtickets-airfrance.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 4, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the Domain Name at issue. On June 5, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. On June 9, 2008, the Center received an informal email communication from Respondent denying any wrongdoing but offering to transfer the disputed Domain Name to Complainant. The Center acknowledged receipt of the informal email communication from Respondent and requested Respondent to confirm if the communication should be regarded as Respondent’s complete response, and further advised Respondent to contact Complainant for purposes of negotiating settlement. On the same day, Respondent sent an email communication to the Center stating that “we hereby confirm that the below & the referred communication may be regarded as our complete response. There is no dispute when we are willing to surrender the domain to the registrar.”
As no request to suspend the proceeding for the purposes of settlement negotiations between the parties was forthcoming from the Complainant, the Center proceeded to Panel appointment. No further communications were received from Respondent.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 4, 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
Société Air France’s Complaint alleges, and submits evidence, that Complainant’s AIR FRANCE mark is federally registered in the United States of America (“United States”), U.S. Registration No. 610,072. The mark was first registered in 1955, and was renewed in 1995. Société Air France’s complaint also alleges, and submits evidence, that Complainant’s AIR FRANCE mark is registered in France, Registration Number 1,703,133 as of October 31, 1991 and Registration Number 99,811,269 as of September 6, 1999. Société Air France’s Complaint also alleges, and submits evidence, that Complainant’s AIR FRANCE mark is registered in India, Registration Number 1,276,424 as of April 2, 2004.
The domain name was first created on January 12, 2008.
5. Parties’ Contentions
Complainant Société Air France asserts as follows:
- Respondent’s Domain Name <airtickets-airfrance.com> is confusingly similar to Complainant’s trademark AIR FRANCE;
- The absence of spaces between the words in the Domain Name, or the presence of a hyphen between “airtickets” and “airfrance” in the Domain Name, do not minimize the risk of confusion between the domain name <airtickets-airfrance.com> and Complainant’s trademark AIR FRANCE
- The use of the word “airtickets” in the Domain Name does not minimize the risk of confusion, because “airtickets” refers to Complainant’s primary business activity, and because the addition of a generic term such as “airtickets” to a well-known trademark does not distinguish the Domain Name from the trademark in question;
- Respondent has no rights or legitimate interests in <airtickets-airfrance.com> because Respondent is not related to Complainant’s business, is not one of its agents, does not carry out any activities for it, and does not conduct any business with it;
- Respondent is not known and has never been known as either “Air France” or “Air Tickets Air France”;
- Complainant has not authorized Respondent to register or use <airtickets-airfrance.com>;
- Respondent has registered <airtickets-airfrance.com> in order to take advantage of Complainant’s AIR FRANCE trademark and disrupt its business;
- Respondent’s registration of <airtickets-airfrance.com> was made in bad faith because, given the international reputation of Complainant and its AIR FRANCE trademark, Respondent knew of the potential for confusing similarity between the AIR FRANCE mark and <airtickets-airfrance.com>, and intended to disrupt Complainant’s business;
- Respondent’s use of <airtickets-airfrance.com> constituted passive holding of the website, and was conducted in bad faith.
Respondent did not substantively reply to Complainant’s contentions even though proper notice of these proceedings was given. Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
6. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint (uncontested as no formal response was filed), the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name in issue is identical or confusingly similar to Complainant’s trademarks in issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name <airtickets-airfrance.com> is alleged to be confusingly similar to certain registered trademarks of Complainant, Société Air France. Specifically, the Domain Name adds the characters “airtickets” as well as a hyphen before the mark AIR FRANCE and the generic top level domain (TLD) “.com.” Because web users typically add a TLD such as “.com” or “.net” to a mark when attempting to locate the mark’s owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001). In addition, the Domain Name’s inclusion of a dash, and exclusion of spaces or capitalization are disregarded when assessing the similarity of this Domain Name to the trademark in question. See Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337 (April 13, 2006); See also Société Air France v. The World of Travel, WIPO Case No. D2002-0485 (July 30 2002).
The addition of a generic term (“airtickets”) to a widely known trademark to form a Domain Name does nothing, at least in this case, to reduce that Domain Name’s confusing similarity to the mark. See id. (<lastminute-air-france.com>). Because the Domain Name is confusingly similar to Complainant’s mark, the Panel concludes that the requirement of paragraph 4(a)(i) of the Policy has been met.
B. Rights or Legitimate Interests
There is no evidence in the record that Respondent has any rights or legitimate interest in the disputed Domain Name. Complainant states that Respondent has no rights or legitimate interest in the Domain Name. This contention is unrebutted as a consequence of Respondent’s failure to contest Complainant’s claims, and the Panel finds it credible. Moreover, Respondent has indicated its willingness to transfer the Domain Name to Complainant. This lends further support to Complainant’s position.
The Domain Name is currently in “passive use” – it does not resolve to any website. Such a use does not appear to be in connection with a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the Domain Name. Respondent is also not commonly known by the Domain Name. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interest in the disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant’s final hurdle is to establish that Respondent registered the Domain Name in bad faith. The Panel finds that Complainant has proven that element of its case as well.
It is difficult to imagine that Respondent could have lacked knowledge of Complainant’s mark, especially given Complainant’s registration of the mark in numerous countries, including India. See Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 (October 8, 2003) (a dispute with a Russian party, where the Panel stated: “The Complainant’s [Société Air France] trademarks have strong reputation and are widely known, as evidenced by several trademark registrations, including Russian trademarks”). Given the fame of Complainant’s mark, “a prima facie presumption is raised that Respondent registered the trademark for the purpose of selling it to Complainant or to a competitor of Complainant 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 Complainant's mark.” Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001). Respondent has offered no evidence to rebut this presumption, and as such, a finding of bad faith use is appropriate. That Respondent’s use of the website has been passive does not alter this conclusion. See id.
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, <airtickets-airfrance.com> be transferred to Complainant.
Michael A. Albert
Dated: July 18, 2008