WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Nice Whois Protection
Case No. D2012-1514
1. The Parties
The Complainant is Société Air France, France, represented by MEYER & Partenaires, France.
The Respondent is Nice Whois Protection of Chicago, United States of America (“US”).
2. The Domain Name(s) and Registrar(s)
The disputed domain name <airfrancecustomerservice.net> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2012, the Registrar 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 the Complainant on July 27, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2012.
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 the Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 27, 2012. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is one of the world’s largest airlines with a history dating back to 1933. The Complainant is a founding member of SkyTeam global airline alliance and since 2003 it merged with KLM forming Air France-KLM Group. The Complainant is located in France and the main hub is at Paris Charles de Gaulle Airport.
In 2011, the Complainant carried about 75,6 million passengers to 230 destinations in 113 countries.
The Complainant operates an extensive website from the domain name <airfrance.com>, which is related to its many other websites including the trademark AIR FRANCE.
The Complainant owns numerous trademark registrations for, or including the words “Air France” worldwide, such as the International Registration for the word mark AIR FRANCE No. 828334 since 2003, the CTM word mark No. 002528461 since 2002 and the US mark No. 0610072 since 1955. The trademarks are registered for transportation, travel services and many other goods and services such as hotels, rental cars, credit cards, clothing.
Previous UDRP panels have already established that the Complainant’s trademark AIR FRANCE enjoys a substantial reputation and fame in many jurisdictions throughout the world. See also Société Air France v. Marc Kerven, WIPO Case No. D2011-1264; Société Air France v. Domains by Proxy, Inc. / Olivier Foulques, WIPO Case No. D2011-1113; Société Air France v. Elitebase, WIPO Case No. D2011-0048 and cases cited therein.
The disputed domain name was registered on January 9, 2012.
5. Parties’ Contentions
The Complainant contents that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain name <airfrancecustomerservice.net> is confusingly similar to its trademark AIR FRANCE:
The disputed domain name is confusingly similar to the Complainant’s trademark as it reproduces it in its entirety. Further, the suffix “customerservice” formed of the words “customer” and “service” added to the disputed domain is associated with the Complainant’s business as such words are commonly used in the frame of the Complainant’s daily business. The addition of such words to the Complainant’s mark does not eliminate the risk of confusion with the Complainant’s mark, but to the contrary it suggests it is the Complainant’s corresponding webpage for Customer Service.
The presence or absence of space or stresses should be ignored when assessing confusing similarity in litigations involving domain names and trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
There is no connection between the Complainant and the Respondent. The Respondent is not currently and has never been known under the wording AIR FRANCE nor AIR FRANCE CUSTOMER SERVICE. Furthermore, the Complainant has not granted the Respondent any license or authorization or other consent to use or register the disputed domain name <airfrancecustomerservice.net>.
The Respondent has registered the disputed domain name in order to take advantage of the Complainant’s well-known trademark with the intention to confuse and divert consumers to competing websites in the field of tourism and travel. After receiving the Complaint, the information available on the disputed domain name was removed and the website remained inactive. Such use of the disputed domain name is not a non-commercial use, nor a bona fide offering of goods and services.
(iii) The disputed domain name was registered and is being used in bad faith:
The Complainant’s trademark is widely known and has a strong reputation and therefore it is inconceivable that the Respondent did not have actual notice of the Complainant’s trademark rights at the moment of registering the disputed domain name.
Further, the Respondent registered the disputed domain name with the Complainant in mind particularly because it included the words “customer service” which are associated with the Complainant’s business, it was using the disputed domain name for hyperlinks displaying services competing with those provided by the Complainant and on the corresponding web page it was shown an airplane with Complainant’s flocking and trademark.
At the time the Complaint was filed, the disputed domain named resolved to a webpage displaying sponsored listings for various services, including airlines, tourism and travel services provided by the Complainant’s direct competitors. In such way, the Respondent was realizing material benefits by diluting the fame and renown of the Complainant’s trademark.
After receiving the Complaint, the Respondent removed the initial content from the website displaying an announcement that the disputed domain name was suspended either for being overused or because the reseller ran out of resources. According to the Complainant, such activation may be assimilated to passive holding which also may constitute bad faith use particularly in this case where the Complainant’s business and mark are well-known, the removal of the fraudulent content was done soon after receiving the Complaint, the current announcement may be harmful to the trademark image of the Complainant and the Respondent used several concealment platforms to hide its true identity.
Indeed, the initially named Respondent was a privacy service provider (WHOIS Privacy Services PTY LTD), as well as the second one named in the amended Complaint after receiving the Registrar’s information which further underlines the Respondent’s fraudulent schemes to conceal its true identity in order to avoid facing responsibilities.
Although several email communications were received by the Center from an alleged respondent, due to their vague content and lack of clear identity of the sender including the lack of actual response to the Complaint, the Panel shall consider that the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the AIR FRANCE trademark, holding registrations worldwide, including in the United States where the Respondent seems to be located.
The dominant part of the disputed domain name, which also constitutes the prefix, reproduces the Complainant’s trademark in its entirety. In addition to this, the disputed domain name contains the words “customer” and “service” which are associated with the Complainant’s business.
Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Sanofi-aventis v. One Star Global, WIPO Case No. D2006-0583).
It is well established in decisions under the UDRP that the presence or absence of spaces, punctuation marks between words or indicators for Top Level Domains (e.g. “.com”, “.info”, “.net”, “.org”) are irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name <airfrancecustomerservice.net> is confusingly similar to the Complainant’s AIR FRANCE trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its AIR FRANCE trademark. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
In this case, the Respondent chose not to participate in this procedure and did not provide any evidence of rights or legitimate interests in the disputed domain name.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by the disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
To the contrary, at the time of filing the initial Complaint, the Respondent was using the disputed domain name containing the Complainant’s well-known trademark for travel and tourism services in connection to a “link farm” offering sponsored links for the sale of services related to travel and tourism containing, inter alia, services provided by Complainant’s competitors. The pay-per-click (PPC) website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Further, the Respondent concealed its true identity using privacy services. The Panel agrees that a registrant may have legitimate reasons to use a privacy service however, using several such services and having in view the rest of the evidence before the Panel, the Panel concludes that, in this case, the use of the privacy service was done in order to evade contact in the event of a domain name dispute (see also TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542).
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s AIR FRANCE trademark is well-known in many jurisdictions worldwide in connection to travel and tourism services being used since 1933.
The disputed domain name <airfrancecustomerservice.net> was registered in January 2012 and contains, along with the Complainant’s entire trademark, the words “customer” and “service” which are commonly used in the Complainant’s main business.
Further, at the time the initial Complaint was filed the Respondent was using the Complainant’s trademark for a web portal, the classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith.
Paragraph 4(b)(iv) provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of bad faith.
Given the fact that the disputed domain name completely incorporates the Complainant’s trademark along with the terms “customer” and “service” which are associated with the Complainant’s business, the website corresponding to the disputed domain name provided services regarding tourism and travel and displayed an airplane with Complainant’s signs, indeed in the Panel’s view, an Internet user accessing the website corresponding to the disputed domain name <airfrancecustomerservice.net> could be confused and believe that it was a website held, controlled by the Complainant, or somehow affiliated or related to it. In this way, the Respondent was obtaining commercial gain by diverting Internet users searching for the Complainant and, in the same time, was disrupting the business of the Complainant by diverting its potential consumers to websites of the Complainant’s competitors.
The fact that the Respondent removed the fraudulent content after receiving the Complaint is still considered a bad faith use in this matter particularly because the disputed domain name incorporates Complainant’s well-known trademark without its consent or authorization and it was used in connection to a link farm as above described.
Furthermore, according to the consensus view of the UDRP Panels (see paragraph 3.9 of the WIPO Overview 2.0), although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In the present case, the Respondent’s use of several privacy services, along with the rest of the evidence before the Panel, may be inferred that the Respondent’s intention was to conceal its true identity and therefore represents another evidence of bad faith registration and use of the disputed domain name.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For 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 <airfrancecustomerservice.net> be transferred to the Complainant.
Dated: September 5, 2012