The Complainant is Société Air France, Roissy, France (the “Complainant”), represented by Meyer & Partenaires, France.
The Respondent is Kristin Hirsch, Hirsch Company, Villingen-schwenningen Marbach, Baden-Wurttemberg, Germany (the “Respondent”).
The disputed domain name <airfrancesite.info> (the “Domain Name”) is registered with Directi Information Pvt Lt, d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2008. On August 11, 2008, the Center transmitted to the Registrar by email a request for registrar verification in connection with the Domain Name. On August 12, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2008.
The Center appointed Dana Haviland as the sole panelist in this matter on September 25, 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.
After the appointment of the Panel and transmission of the case file for review and decision on September 25, counsel for the Complainant sent an email to the Center on October 2, 2008, requesting leave to amend the Complaint to add an additional claim against the Respondent for transfer of a second domain name registered by the Respondent, alleging that the Complainant had just learned of this additional registration. On October 2, 2008, the Center forwarded the Complainant's email request to the Panel by email. The Center also sent an email on October 2, 2008 to the Complainant, acknowledging receipt of the message, copied to the Respondent. The email to the Respondent was sent to the email address previously provided by the Registrar as part of the contact information for the Respondent and previously used by the Center to transmit prior case communications to the Respondent, without incident, (though also without response). The Center's October 2, 2008 email to the Respondent, however, was returned with a notice that “the email account that you tried to reach is disabled.”
The Complainant is the owner of various national and international registered trademarks for the mark AIR FRANCE predating the registration of the Domain Name.
The Domain Name was registered by the Respondent on June 27, 2008. At the time of registration, the Domain Name resolved to a pornographic website. The Domain Name is not currently in use.
The Complainant states that it is one of the world's major airline companies, tracing its origins back to 1933. The Complainant operates an international web portal at “www.airfrance.com”. It has also registered several generic and country code top-level domain names consisting of or incorporating the trademark AIR FRANCE, including <airfrance.fr>, <airfrance.de>, <airfrancevacation.com>, <airfranceairlines.com>, and <airfranceflights.com>.
According to the Complaint, Société Air France is the trade name of the Complainant, used in commerce since 1933. The Complainant is the registered owner of a large number of trademarks consisting of or including the wording “Air France” in a great majority of countries in the world, including, for example, the following:
- AIR FRANCE, French trademark, Registration No. 1,703,113 of October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001;
- AIR FRANCE, European Community trademark, Registration No. 4422481, filed on May 4, 2005 and registered on August 7, 2006; and
- AIR FRANCE, European Community trademark, Registration No. 2528461, filed on January 9, 2002 and registered on October 7, 2003.
The Complainant contends that its trademark AIR FRANCE is widely known throughout the world and has been recognized as a well-known mark by courts and UDRP administrative panels.
The Complainant contends that the Domain Name is confusingly similar to its trademark AIR FRANCE, in that its trademark AIR FRANCE is entirely reproduced in the Domain Name, in combination with the generic or descriptive term “site.” The Complainant argues that its AIR FRANCE trademark is the only distinctive element of the Domain Name and that the mere addition of a generic or descriptive term does not eliminate the risk of confusion with the Complainant's well-known trademark.
The Complainant contends that Respondent has no rights or legitimate interest in the Domain Name. According to the Complaint, the Respondent is not an agent or in any other way related to the Complainant's business, and the Complainant has not granted the Respondent any license or authorization to make any use of its trademark or to register the Domain Name.
The Complainant asserts that the Domain Name has never been used for a bona fide offering of goods and services nor for any non-commercial or fair use. According to the Complaint, the Domain Name initially resolved to a pornographic website at the time of its registration, in order to generate revenues by taking advantage of the renown of the Complainant's AIR FRANCE mark. The Domain Name is not currently in use.
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. According to the Complaint, in view of Complainant's well-known trademark, the Respondent must have been aware of the Complainant's mark and have intended in bad faith to take advantage of it for commercial gain. The Complainant asserts that the Respondent's use of the Domain Name for commercial gain through a pornographic website constituted bad faith use, and that under the circumstances, its current passive use of the Domain Name is also in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Complaint seeks transfer of the Domain Name <airfrancesite.info>, but the Complainant has recently requested addition of a claim with respect to a second domain name registered by the Respondent which also incorporates the Complainant's trademark. The Panel denies this request for leave to amend the Complaint.
Under UDRP Rule 12, the Panel has the sole discretion to request supplemental submissions from the parties, but there is no explicit right for the parties to submit unsolicited supplemental submissions. Nor is there any explicit provision in the Rules for amendments to the complaint or response. The UDRP procedure is designed to be quick and efficient, with an administrative decision to be rendered within 14 days from submission of the file to the panel, under Rule 15.
However, as the UDRP case law has developed, numerous cases have construed the Rules as bestowing upon the administrative panel the discretion to permit not only unsolicited supplemental evidentiary submissions or legal arguments, but also amendments to the pleadings to add additional domain names. See Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337 (amendment to allow additional domain name claim allowed); Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a Creative Genius Domain Name Sales, WIPO Case No. D2001-0729 (similar amendment denied).
This discretion to permit the addition of additional domain names after filing of the complaint is usually based upon one or more of the various provisions in Paragraph 10 of the Rules with respect to the general powers and obligations of the panel to “conduct the administrative proceeding in such manner as it considers appropriate”, to ensure “that each Party is given a fair opportunity to present its case”, to ensure “that the administrative proceeding takes place with due expedition”, and to “decide a request by a Party to consolidate multiple domain name disputes.”. Rule 10(a), (b), (c) and (e). See, e.g., Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547 (“The decision of a Panel as to whether to allow the amendment of a Complaint to add further domain names must be made in accordance with paragraph 10 of the [Rules]”.
Some, but not all, UDRP panelists have permitted an unsolicited amendment of the Complaint to add claims for transfer of additional domain names, depending upon the circumstances of the case, and in particular upon the timing of the request for leave to amend. In Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337, the panel permitted such an amendment when the complainant's request to add an additional domain name to the proceeding was made before appointment of the panel and transmission of the case file for review and decision. But in Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a Creative Genius Domain Name Sales, WIPO Case No. D2001-0729, the panel denied an amendment to add a domain name because “it would cause substantial delay in the final resolution of this dispute.” The single panelist in that case noted that the Center would have to submit new registrar verifications and allow the respondent 20 days to respond to the amendment to the complaint, and expressed concern about procedural difficulties and prejudice to the respondent's right under the Rules to choose a three member panel with respect to resolution of the dispute over the additional domain name. The panelist suggested, however, that “[h]ad this request been made shortly after the filing of the initial complaint, then the amendment likely would have been acceptable, as it would have caused neither prejudice nor delay.” Id.
In the instant case, the request to add an additional domain name was not made soon after the filing of the Complaint, but a week after the appointment of the Panel and transmission of the case file and only a few days before issuance of the administrative decision. In the Panel's view, to allow the amendment at this late stage of the proceedings would unduly delay the expeditious and final resolution of the initial domain name dispute. With respect to the additional domain name, filing an amendment in this case would be no faster or more efficient for the Complainant than filing a complaint in a new case, as the Center in either event would be required to recommence the case and repeat for the new domain name all the procedural steps outlined above already taken for the initial domain name claim. Moreover, repeating this process in the instant case would take several weeks of additional work and duplicative costs for the Center without any provision for additional administrative fees, which seems to the Panel unreasonable at this juncture, in view of the Rules' provisions for joinder of domain name claims at the commencement of a UDRP proceeding, the Center's modest fees for its UDRP dispute resolution services, and the substantial overhead it must incur in providing them.
The Panel concurs with the conclusion of the panel in Department of Management Services, State of Florida v. Digi Real Estate Foundation, supra, that:
“[T]he course most consistent with paragraph 10 of the [Rules], and the principles of the UDRP system, is generally not to permit the addition of new domain names to a Complaint after a single member panel has been appointed. … It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.”
The request is simply too late for completion of this case with “due expedition”, as required by the Rules, paragraph 10(c).
For these reasons, the Panel denies the Complainant's request to amend the Complaint in the instant case to add an additional claim for relief with respect to a second domain name and will proceed to the merits of the case with respect to the Domain Name.
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
The Complainant has established widespread use and prior registration rights in its AIR FRANCE trademark, which is incorporated in its entirety into the Domain Name. As stated in Société AIR FRANCE v. Ted Chen, WIPO Case No. D2007-0528, “[t]he Complainant's AIR FRANCE mark is well-known. The addition of a descriptive word to this mark, as is found in each of the disputed domain names, fails to distinguish the domain names from the mark.”
Thus, in this case, the addition of the descriptive term “site” to the Domain Name does not preclude a finding of confusing similarity to the Complainant's trademark. See F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338.
The Panel finds that the Complainant has satisfied the first element of its claim under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, respondent used, or made 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent is not an agent nor otherwise related to the Complainant's business, that the Respondent has not been licensed to use the Complainant's trademark, that the Respondent has not been commonly known by the Domain Name, and that the Respondent has not made any use of the Domain Name for either a bona fide offering of goods and services or some other noncommercial or fair use under paragraph 4(c) of the Policy. On the contrary, the Complainant has shown that the Respondent initially utilized the Domain Name to misleadingly divert Internet users to a pornographic website for commercial gain, and that the Domain Name is not currently being used at all. The Complainant contends that the Respondent therefore has no rights to or legitimate interests in the Domain Name, as required by paragraph 4(a)(ii) of the Policy. The Complainant has made out a prima facie case with respect to paragraph 4(a)(ii) and shifted the burden of production to the Respondent to show that it has a particular right or legitimate interest in the Domain Name under paragraphs 4(a)(ii) and 4(c) of the Policy.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Worldwide Franchise Systems, Inc., Sheraton International, Inc. v. KerryWeb Enterprise, Inc, North West Enterprise, Inc. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150; CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is ‘uniquely within the knowledge and control of the respondent'”. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
The Respondent has not asserted any rights or legitimate interests in the Domain Name in this case and has presented no evidence in opposition to the Complainant's assertions in this regard. The use of the Domain Name for a pornographic website is clearly for commercial gain, not a noncommercial or fair use. See Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 (“Respondent's use of the domain name to divert initially to a pornographic website… does not amount to a legitimate interest in the Domain Name”). Under the circumstances, where the Respondent has registered the Domain Name incorporating the Complainant's widely-known trademark for use in connection with a pornographic website for commercial purposes, the subsequent failure to use the Domain Name for such purpose does not legitimize its prior illegitimate use nor give rise to any inference of any present or future rights or legitimate interests of the Respondent in the Domain Name. See also Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219 (registration of numerous domain names incorporating the AIR FRANCE trademark on the same date and with the same registrar as the Domain Names herein and resolving to a similar or identical pornographic website); Société AIR FRANCE v. Nadine Schwab, WIPO Case No. D2008-1220 (same).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Complainant has thus shown the second element of its claim, pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company, WIPO Case No. D2007-1206.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
The Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy, as the evidence shows that the Respondent registered the Domain Name and used it to attract Internet users to the Respondent's pornographic website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark. See Six Continents Hotels, Inc. v. Seweryn Novak, WIPO Case No. D2003-0022 (diversion of domain names incorporating Holiday Inn trademark to a pornographic site was consistent with a finding of bad faith registration and use). Under the circumstances, as noted above with respect to the Respondent's lack of legitimate interests in the Domain Name, the Respondent's subsequent cessation of this bad faith use does not negate a finding of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has thus satisfied the third element of its claim pursuant to paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <airfrancesite.info> be transferred to the Complainant.
Date: October 9, 2008