WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Registrant : Janice Liburd / Registrant : Moniker Privacy Services
Case No. D2010-2244
1. The Parties
Complainant is Société Air France of Roissy Charles de Gaule, France, represented by MEYER & Partenaires, France.
Respondent is Registrant : Janice Liburd of Panama, Panama; Registrant : Moniker Privacy Services of Pompano Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <corporateairfrance.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On December 23, 2010, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 4, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 2, 2011. 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 Société Air France is the French flag carrier and one of the world's largest airlines. It is a subsidiary of the Air France-KLM Group and a founding member of the SkyTeam global airline alliance. Air France serves 32 destinations in France and operates worldwide scheduled passenger and cargo services to 183 destinations in 98 countries. Société Air France is the trade name of Complainant, used in commerce since 1933.
Complainant owns numerous trademarks worldwide, consisting of or including the terms AIR FRANCE. Inter alia, Complainant owns the following registrations:
- AIR FRANCE, French nominative trademark, Reg. No. 1703113, Reg. date October 31, 1991, covering international classes 01; 42, renewed on September 27, 2001;
- AIR FRANCE, French nominative trademark, Reg. No. 99811269, Reg. date September 6, 1999, covering international classes 03; 04; 05; 06; 08; 09; 11; 12; 14; 16; 18; 19; 20; 21; 24; 25; 26; 27; 28; 29; 30; 31; 32; 33; 34; 35; 36; 37; 38; 39; 41; 42; 43; 44 and 45; and
- AIR FRANCE, nominative trademark registered in the United States of America, Reg. No. 0610072, Reg. date August 2, 1955, renewed August 2, 1995, covering International Class 39: Air transportation of passengers and air and motor transportation of freight. First use 1933; first use in commerce 1945.
Complainant operates a dedicated website at the “corporate.airfrance.com” sub-domain, where it provides corporate information to the public about business figures and news, the Air France-KLM merger, Complainant’s alliances, network and fleet, its initiative with regard to sustainable development, etc.
The disputed domain name was registered on October 27, 2010.
On December 21, 2010, the webpage at the disputed domain name, entitled “Air France”, showed numerous links and search results redirecting the Internet user to websites of a commercial nature. Many of these links appear to belong to entities offering travel and tourism services, and some of them offer air tickets in competition with Complainant.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar Complainant’s trademark AIR FRANCE. This trademark is entirely reproduced in the disputed domain name. The domain name combines Complainant’s famous trademark with the term “corporate”. This term is descriptive of any information about Complainant and its business and financial assets, made available to the public. The risk of confusion with the trademark AIR FRANCE is all the more important that Complainant dedicates an entire website to corporate information under the sub-domain <corporate.airfrance.com>.
Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Respondent is not related in any way to Complainant's business: it is not one of its agents and does not carry out any activity for, or has any business with it. To Complainant’s best knowledge, Respondent is not currently and has never been known by the terms Air France or Corporate Air France. No licence or authorization has been granted to Respondent to make any use or apply for registration of the domain name <corporateairfrance.com>.
Respondent has registered the disputed domain name in order to take advantage of Complainant’s well-known trademark, to confuse and divert Internet users to commercial websites - some of them in the field of tourism and travel - through a “pay per click” domain name parking solution. Such use is not a bona fide offering of goods or services under Policy, paragraph 4(c)(i), or a noncommercial or fair use under Policy, paragraph 4 (c)(iii). As a matter of fact, Respondent has not engaged in any action showing it has rights or legitimate interests in the disputed domain name. Therefore Respondent should not be considered as having rights or legitimate interests in respect of the disputed domain name.
It is difficult to imagine that Respondent could have ignored the well-known trademark AIR FRANCE at the time of registering the confusingly similar disputed domain name. In several previous UDRP cases Complainant has demonstrated the strong reputation and the widely known character of its mark AIR FRANCE throughout the world for a long time. While registering the disputed domain name, there is no doubt that Respondent wanted to refer to Complainant. Respondent has registered this domain name precisely because it knew the well-known character of the trademark AIR FRANCE.
The term “corporate” which has been combined with the trademark AIR FRANCE in the disputed domain name coincides with one of Complainant’s dedicated websites.
Some of the hyperlinks displayed under the disputed domain name <corporateairfrance.com> are related to tourism and travel, activities where Complainant acquired its reputation.
Respondent has registered this domain name precisely because it was aware of the well-known character of the trademark AIR FRANCE, for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and divert Internet users to other commercial websites through hyperlinks. By registering a domain name very similar to the Complainant’s URL “corporate.airfrance.com”, Respondent also tried to generate Internet traffic from Internet users seeking Société Air France's general information website. Tourism creates an important traffic on the Internet. In registering the disputed domain name, Respondent expected to take financial advantage of this paying business. This combination of facts is asserting the bad faith registration of the disputed domain name by Respondent.
Respondent’s use of the disputed domain name constitutes bad faith use. Respondent is using the disputed domain name to divert Internet users to a parking webpage on which several hyperlinks are displayed among which a majority of results are in the field of tourism and travel. By clicking on these hyperlinks, users are directed to other results in the field of tourism and online travel ticketing, mainly pointing to competing third-party commercial websites. These hyperlinks generate revenue to the benefit of Respondent through a “pay per click” domain name parking solution. Considering the above, it is obvious that Respondent is intending to realize material benefits by diluting the fame and renown of Complainant's trademark. For all these reasons, Respondent has engaged in bad faith registration and use of the disputed domain name.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has shown that it has trademark rights in the AIR FRANCE mark. See “Factual Background” above.
It is well established by UDRP panels that the addition of a generic term to a complainant’s mark is insufficient to distinguish a domain name from the mark. Since the disputed domain name incorporates the AIR FRANCE mark in its entirety, with the only addition of the generic term “corporate” and the “.com” gTLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AIR FRANCE mark.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not related in any way to Complainant's business, that it is not one of its agents and does not carry out any activity for, or has any business with Complainant, that it is not currently and has never been known by the name Air France or Corporate Air France, that Complainant did not grant any licence or authorization to Respondent to make any use, or apply for registration of the disputed domain name. Complainant also contends that Respondent registered the disputed domain name in order to take advantage of Complainant’s well-known trademark, to confuse and divert Internet users to commercial websites in the field of tourism and travel through a “pay per click” domain name parking system, and that such use is not a bona fide offering of goods or services under Policy, paragraph 4(c)(i), or a noncommercial or fair use under Policy, paragraph 4 (c)(iii). Finally, Complainant contends that Respondent has not engaged in any action showing it has right or legitimate interests in the disputed domain name.
Taken together, these contentions and supporting evidence - none of which have been contested by Respondent - amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Since Respondent has not submitted any comments or evidence whatsoever in its favor, the Panel concludes that Respondent lacks any rights to or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This Panel shares the view of previous UDRP panels that the AIR FRANCE mark enjoys considerable renown and notoriety. See, among many other cases, Air France KLM v. Ho Nim, WIPO Case No. D2010-0838 (AIR FRANCE and KLM marks considered well-known); Société Air France contre ATPS v. Bennaceur Djemoui, WIPO Case No. D2010-0786 (AIR FRANCE mark considered notorious); and Société Air France v. Van Wijk & Mesker Holding BV, WIPO Case No. D2002-0028 (AIR FRANCE trademark considered famous).
Considering that the registration of the disputed domain name was made many years after the well-known AIR FRANCE mark had been registered in France and United States of America, it is unthinkable that Respondent could not have known of Complainant, its mark and protected air transportation services at the time of the domain name registration. The Panel concludes that Respondent must have had Complainant in mind when registering the disputed domain name.
Complainant has shown that the webpage at the disputed domain name contained numerous links and search results redirecting the Internet user to websites of a commercial nature, and that several of such links appeared to belong to entities offering services in the field of tourism and travel, which is closely related to Complainant’s field of business, while some of these links directly offered air transportation services in competition with Complainant. It appears that Respondent was seeking to obtain income from a “click-through” or similar system.
Given this use of the disputed domain name, the Panel cannot but conclude that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product, or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).
Finally, the Panel notes that Respondent Janice Liburd was the losing respondent in previous UDRP cases. See Shaw Industries Group, Inc., Columbia Insurance Company v. Moniker Privacy Services/Janice Liburd, WIPO Case No. D2010-1645; Tractor Supply Co. of Texas LP and Tractor Supply Company v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2010-0976; Nilfisk-Advance A/S v. Moniker Privacy Services /Janice Liburd, Porchester Partners, Inc., WIPO Case No. D2010-0859 ; and Européenne de Traitement de L'Information “Euro Information” v. Janice Liburd Porchester Partners, Inc., WIPO Case No. D2010-0751. In all these cases, Respondent Janice Liburd failed to present a response or any other explanation for having registered third party marks as domain names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <corporateairfrance.com> be transferred to Complainant.
Dated: February 14, 2011