The Complainants are Société Air France of Paris, France (“Air France”) and Koninklijke Luchtvaart Maatschappij of Amstelveen, The Netherlands (“KLM”), represented by MEYER & Partenaires, France.
The Respondent is Transure Enterprise Ltd of Tortola, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <flyinblue-online.com> and <flyingblue-oneline.com> (the “Disputed Domain Names”) are both registered with Above.com, Inc.
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2008 in respect of only <flyinblue-online.com>. On August 27, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with that domain name. On August 28, 2008, Above.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of that domain name and providing its contact details. The Center verified that the original 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 19, 2008.
The Center appointed Philip N. Argy as the sole panelist in this matter on September 29, 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.
Shortly after the Panel was appointed the Complainants sought to add the domain name <flyingblue-oneline.com> to the Complaint. Despite the similarity between the two domain names and despite the fact that the Respondent had chosen not to file any Response in respect of the original Complaint, the Panel took the view that the Policy and the Rules required the Respondent to be given notice of any Complaint being amended to add an additional domain name and 20 days within which to file a Response if it wished to do so. Accordingly, by Procedural Panel Order No. 1, the Panel ordered that the Complainants file an Amended Complaint by October 12, 2008 and that the Respondent have 20 days after being served with the same within which to prepare and file a Response if it wished to do so. An Amended Complaint was duly filed and served on the Respondent in accordance with the Rules, and the Respondent was given until November 11, 2008 to file its Response. The Respondent did not file a Response to the Amended Complaint. The Center notified the Respondent's default on November 12, 2008, and the Panel substituted the Amended Complaint for the original Complaint. For these reasons, a reference to the Complaint is a reference to the Amended Complaint dated October 10, 2008.
All other procedural and administrative requirements have been met.
The following facts, taken from the Complaint, are uncontested:
(a) Air France traces its origins back to 1933. It was a founding member of an alliance of airlines called “Skyteam Alliance”, the other nine international airline members of which include KLM which joined in September 2004.
(b) In September 2003, Air France and KLM announced their merger to create a pan-European airline joint venture.
(c) In March 2005, the joint venture announced the merger of their previously separate frequent flyer schemes. The merged scheme was to be known as “Flying Blue”, and it thereafter became the brand for the frequent flyer scheme now operated jointly by Air France and KLM. Members earn points for travel on any “Skyteam Alliance” airline, and points can similarly be redeemed for flights on those airlines.
The Complainants submit that FLYING BLUE is a well-known trademark, that each of the Disputed Domain Names are confusingly similar to the Complainants' mark, that the Respondent has no rights or legitimate interests in the Disputed Domain Names, and that the Disputed Domain Names were registered and are being used in bad faith.
Given the lack of a Response, the Complainants' submissions can be summarized for present purposes as follows:
The disputed domain name <flyingblue-oneline.com> wholly contains Complainants' FLYINGBLUE trademark and <flyinblue-online.com> contains a mistyped version of the trademark that omits the letter “g” from the word “flying”. In light of the Complainants' registered trademark FLYING BLUE in many countries of the world, and also having regard to the Complainants' domain names <flyingblue-online.com> and <flyingblue-online.net>, the Respondent's registration and use of the Disputed Domain Names creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement by the Complainants of the Respondent's websites to which the Disputed Domain Names resolve.
The Complainants also point to the findings in their previous successful complaint against Wan-Fu China, Ltd (Société Air France, Koninklijke Luchtvaart Maatschappij v. Wan-Fu China, Ltd., WIPO Case No. D2007-0651) in relation to <flyingblue-online.net> that the suffix “online” could not distinguish the respondent's domain name from the Complainants' trademark sufficiently to prevent it from being confusingly similar and that in fact the use of the “online” suffix made it more likely that the domain name would be confused with the Complainants' trademark. They then say that in this case the Panel should find that the combination of their trademark with “online” (or misspelled variants thereof) would mislead consumers into thinking that they would find an online reservation service operated by the Complainants.
The Respondent has no rights or legitimate interests in the Disputed Domain Names because the Respondent is not in any way related to the Complainants' businesses, is not one of the Complainants' agents, has no business with the Complainants, and is not licensed or authorized to use the Complainants' domain names. The Complainants also say that the Disputed Domain Names point to parking pages at which airline and travel related services from other airlines are promoted so that the Disputed Domain Names are in fact only being used to divert Internet users to a pay-per-click parking service.
The Complainants also refer to their success against MIC in relation to <flyingbluemiles.com> Société Air France and Koninklijke Luchtvaart Maatschappij v. MIC, WIPO Case No. D2006-0437, in which it was found that the respondent's use of that domain name was neither a noncommercial or fair use nor a bona fide offering of goods or services for the purposes of paragraphs 4(c)(iii) and (i) respectively of the Policy.
The Respondent's bad faith registration and use are said to be able to be inferred from the fact that the Disputed Domain Names are typo squat variants of the Complainants' trademark, and by reference to the use of hyperlinks on the parking page to which the Disputed Domain Names resolve that lead to offerings of airline-related services and online ticketing competitive with those of the Complainants' business.
The Complainants also submit that the Respondent's “past litigations” can be taken into account, by which they refer to adverse outcomes against the Respondent in three typosquatting cases brought by other complainants: F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422 in respect of <wwwroche.com>; Wolters Kluwer U.S. Corporation v. Transure Enterprise Ltd., WIPO Case No. D2008-0384 in respect of <wolterkluwer.com>; and Eldorado Stone Operations LLC v. Transure Enterprise Ltd., WIPO Case No. D2008-0684 in relation to <eldoradoradostone.com>. This pattern of conduct is submitted by the Complainants in support of the proposition that the Respondent's conduct falls within paragraph 4(b)(ii) of the Policy.
Although the Complainants' submissions are formally uncontested, the Complainants have the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and the Panel believes it proper to consider the submissions and the evidence, and to make formal findings. Also, under paragraphs 10 and 15(a) of the Rules, the Panel regards this as a desirable course to take in any event.
The Complainants have provided evidence of trademark registrations in the United States of America and France for FLYING BLUE. That is sufficient to establish that they have rights in that trademark.
It is apparent that <flyingblue-oneline.com> wholly contains the trademark and <flyinblue-online.com> contains the trademark save for omission of the letter “g” from “flying”. “Flyin” can be regarded as a typographical error for “flying”. It could be viewed as the two words “fly in”, or it could be viewed as “flyin'“, a popular contraction of “flying”. What is clear, however, is that each of these variants is immaterially different from “flying” in terms of meaning, so the focus turns to the effect of the “online” and “oneline” suffixes. “Online” has its ordinary meaning in the Internet context of a real time interaction with a website. “Oneline” can be seen as a typographical error for “online” or it means the cardinal numeral 1 in word form combined with the English word “line”. The Panel infers that more than a miniscule number of ordinary consumers would misread “oneline” as “online” or, more relevantly, could mistype “online” as “oneline”.
Whilst the Complainants urge the Panel to take the view that the Disputed Domain Names are apt to cause consumers to confuse the Respondent with the Complainants, this is not the right enquiry for the purposes of paragraph 4(a)(i) of the Policy. Although that submission may be compelling in relation to other limbs of the Policy, it carries no weight in relation to this limb. The inquiry here is confined to whether either of the Disputed Domain Names is identical or confusingly similar to a trademark in which the Complainants have rights. This is a narrow enquiry which cannot take account of the content of the Respondent's website nor the fact that the Complainants may use domain names with which the Disputed Domain Names are confusingly similar. The nature of the Complainants' business is relevant when looking at the effect of characters in the Disputed Domain Names that prefix or suffix the characters that comprise or resemble the trademark element. That is because the exercise is essentially one which looks for confusion as to trade source on the face of the Disputed Domain Names in light of the Complainants' trademark. Where, as here, the additional characters are descriptive or redolent of the Complainants' products or services, the likelihood that the additional matter might distinguish the Disputed Domain Names from the trademark is destroyed. At the very least such additional matter is not capable of preventing the Disputed Domain Names from being confusingly similar to the trademark which they embed.
Numerous panel decisions under the Policy have established that the addition of words or letters to a mark used in a domain name does not generally alter the fact that a domain name is confusingly similar to the mark. Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “online” or its mistyped equivalent, “oneline”, does not prevent the likelihood of confusion in this case. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)).
The Panel finds each of the Disputed Domain Names to be confusingly similar to the Complainants' FLYING BLUE trademark.
The Respondent has not asserted any basis for its use of “flying blue” and “flyin blue” in the Disputed Domain Names. As this Panel has previously noted in numerous decisions, the lack of a response to a complaint involving famous trademarks makes it difficult for a panel not to find in a complainant's favour on this element of the Policy. Where, as here, the disputed domain name comprises a complainant's mark with descriptive text that corroborates rather than dispels the apparent association, the legitimacy of a respondent's interests is correspondingly more difficult to demonstrate and, in this Panel's view, virtually impossible to demonstrate without filing a Response.
For the reasons advanced by the Complainants, the Panel comfortably concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and so finds.
The FLYING BLUE mark has been in use for almost five years in the United States and France. No plausible explanation for the Respondent's conduct has been proffered. As noted by the Complainants, both Disputed Domain Names are pointed to a parking page. In other words, the domain name record for the Disputed Domain Names nominates as host servers a domain name monetization service which enables a domain name registrant to “park” their domain name instead of providing a website to which the domain name will resolve. When a user clicks on a link or types one of the Disputed Domain Names into their browser, instead of being taken to a website owned by the Respondent, they are taken to a website hosted by a third party and the Respondent receives payments from that third party for links that visitors to the site then follow. The website to which the Disputed Domain Names resolve is generated based on the domain name parked. So, in the case of the Disputed Domain Names, the “Flying Blue” character string is used to generate a website where that character string is used as a keyword to determine the links that will be displayed to a visitor. Needless to say all such links point to airline and online ticketing services, most of which are services similar to those sold by the Complainants but in fact being more likely those offered by a competitor of the Complainants.
The Panel can conclude from the Respondent's use of a domain monetization service in this case that its use of the Disputed Domain Names is unconnected with any bona fide supply of goods or services by the Respondent. It would appear that the Respondent sits passively collecting click-through revenue generated solely from the Complainants' goodwill and Internet users' inaccurate keying of the correct domain names, which would ostensibly be associated with the Complainants' FLYING BLUE frequent flyer program.
The Panel finds that the Disputed Domain Names are being used in bad faith by the Respondent.
There is no direct evidence that the Respondent registered the Disputed Domain Names in bad faith. The evidence is circumstantial and involves drawing inferences essentially from the way that the Disputed Domain Names have been used. Ordinarily a panel needs to be careful when the trademark in question is capable of non distinctive use, especially in countries where the Complainants' frequent flyer program may not be widely known.
However, in the absence of any response from the Respondent offering even a weakly plausible explanation, the Panel has nothing to counter the otherwise available inferences that the Complainants, and indeed the record, invite the Panel to draw. Accordingly the Panel formally finds that the Disputed Domain Names were registered and are being used by the Respondent 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 names <flyinblue-online.com> and <flyingblue-oneline.com> be transferred to the First Complainant, Air France, in accordance with the Complainants' request.
Philip N. Argy
Dated: November 20, 2008