WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Giovanni Laporta, Yoyo.Email
Case No. D2015-0443
1. The Parties
The Complainant is Société Air France of Roissy CDG Cedex, France, represented by MEYER & Partenaires, France.
The Respondent is Giovanni Laporta, Yoyo.Email of Michigan, United States of America (“USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <airfrance.email> is registered with GoDaddy.com, LLC (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on March 12, 2015. On March, 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2015, 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. On March 24, 2015, the Center received the Respondent’s email communication.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain 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 April 2, 2015. In accordance with the Rules paragraph 5(a), the due date for Response was April 22, 2015. The Response was filed with the Center on April 12, 2015.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 5, 2015. 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
The Complainant is a French airline passenger and freight company and one of the largest in the world. It was created on October 7, 1933, from the merger of Air Union, Air Orient, Société Générale de Transport Aérien, Compagnie Internationale de Navigation Aérienne and Compagnie Générale Aéropostale.
As a result of the merger between Alitalia and Air France in 1997, Compagnie Nationale Air France became Société Air France. Air France has been a member of the SkyTeam Alliance since 2000. In 2003, another alliance took place between Air France and KLM to form the leading airline group in Europe.
With a fleet of 583 aircraft, Air France serves 231 cities in 103 countries and represents 1,500 flights every day. In 2013, the Air France-KLM Group carried more than 77.3 million passengers and had a EUR 25.52 billion revenue. At Annex C to the Complaint is a link to the Complainant’s international website “www.airfrance.com”.
At Annex D to the Complaint is a link to its North American website at “www.airfrance.us”. The Complainant has registered many generic top level domain names consisting of or incorporating the trade mark AIR FRANCE. All of these domain names are redirecting the Complainant’s customers to the aforesaid website.
Evidence is adduced by the Complainant of its trade mark rights. The name Société Air France which is the trading name of the Complainant has been used in commerce since 1933. The Complainant has filed many national, Community and International trade marks consisting or including the words “Air France”. Examples are given in the Complaint including:-
International trade mark AIR FRANCE number 828334 registered on October 20, 2003 with a subsequent designation of the USA.
AIR FRANCE registered in many countries as a national trade mark and as an international trade mark registered by number 1123935 on May 25, 2003.
The Complainant also relies on previous WIPO UDRP decisions in which Panels have recognised that the trade mark AIR FRANCE in the name of the Complainant is a well-known trade mark. These include Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337; Société Air France v. Alvaro Collazo, WIPO Case No. D2004-0446; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417; Air France v. Kitchkulture, WIPO Case No. D2002-0158; and Société Air France v. Van Wijk & Mesker Holding BV, WIPO Case No. D2002-0028.
The history of the current dispute is that the Complainant was informed that the Respondent Yoyo.Email represented by Mr Giovanni Laporta located in the United States registered on March 27, 2014, the domain name <airfrance.email>. Yoyo.Email is the Respondent for the disputed domain name. The disputed domain name is redirected to a blank page as can be seen at Annex E to the Complaint. The servers which allow the sending and receiving of emails are configured to be active as is shown at Annex E to the Complaint.
The Complainant through its investigations found that Yoyo.Email had also registered more than 4,003 other domain names mainly in the new gTLD “.email” form as can be seen from Annex G to the Complaint.
The Complainant sent a cease and desist letter to the Respondent requesting the transfer of ownership of the domain name. A registered letter and an email was sent to the Respondent on July 24, 2014, informing it that the domain name <airfrance.email> was infringing the Complainant’s trade mark rights.
The Respondent replied by email on August 7, 2014. In its reply, it disagreed with the Complainant’s contentions related to trade mark infringement and explained that the domain name reproducing the trade mark is used by the Respondent in a “lawful and controlled way” and that the “Yoyo service is a new email recorded delivery service”. The Respondent referred to the Policy and to a URS decision and concluded that “we are an honest company with a legitimate use for the domain”. It also referred to the start of a Federal Court action in the United States. As a result of this response and the Respondent’s refusal to transfer ownership of the domain name, the Complainant decided to submit the matter to the Center.
According to the Respondent, it registered the disputed domain name for a “legitimate business purpose with the good faith intent to comply with all laws including trade mark laws. There has been no use for the domain to date. The intended use is not a trade mark use, or public use. There has been no trafficking of the domain”. It alleges that the Respondent purchased all its email domain names lawfully in good faith. It is a legitimate technology business responding to ICANN’s express goal for the new gTLD program and expanding consumer choice on the Internet. It has invested tremendous time and money to develop a lawful business under the .email gTLD. It refers to its website Yoyo.Email/beta which is under development and should be launched soon but which is subject to change. It argues that the only factual evidence relating to its activities is that it is purchased email domain name assets.
5. Parties Contentions
The Complainant contends:
1. The Complainant has established trade mark rights in the mark AIR FRANCE.
2. The Respondent has no rights or legitimate interests in the disputed domain name. Neither Yoyo.Email nor its representative is related in any way to the Complainant’s business.
3. The disputed domain name was registered and is being used in bad faith.
The Respondent submits that it has registered the disputed domain name in dispute for a legitimate business purpose, there has been no use of the disputed domain name and that the intended use is not a trade mark use nor a public use.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the Complainant’s evidence of trade mark rights referred to above, the Panel finds that the Complainant has a trade mark or service mark for the mark AIR FRANCE and in which the Complainant has rights.
The Complainant argues that the disputed domain name <airfrance.email> reproduces letter by letter the Complainant’s trade mark and is therefore identical to its trade mark. The use of the new gTLD “.email” like other gTLDs is not a distinguishing feature and should be ignored in comparing the trade mark to the disputed domain name. It is well established in prior WIPO UDRP decisions for example Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539 which is referred to by the Complainant that the addition of a gTLD after a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trade mark.
The Complainant also points out that the domain name is also confusingly similar to the domain name <airfrance.com> which has been used for many years by the Complainant.
The Panel notes that this element does not appear to be contested by the Respondent in its Response.
The Panel finds that the Complainant has established trade mark rights in the trade mark AIR FRANCE and that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark AIR FRANCE.
Accordingly the Panel finds for the Complainant with regard to this element of the Policy.
B. Rights or Legitimate Interests
According to the Complainant, the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. It argues that the Respondent is not related in any way to the Complainant’s business. It is not one of its agents and does not carry out any activity for, or have any business with it. Moreover the Respondent is not currently and has never been known under the trade mark AIR FRANCE.
The Complainant confirms that no licence or authorisation has been granted to the Respondent to make any use for or apply for registration of the disputed domain name.
The Complainant relies upon an early UDRP decision, Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 which established that in the absence of any licence or permission from the Complainant to use any of its trade mark rights or to apply for or use any domain name incorporating those trade marks no actual contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.
The Complainant also relies upon the reply to the cease and desist letter and the fact as shown by Annex H to the Complaint that at least 28 UDRP decisions have already been rendered in cases in which the Respondent is a Respondent. All of those cases are about “.email” domain names and all of those UDRP decisions resulted in the transfer of the domain names to the complainant. In particular, the Complainant relies upon the following cases: M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1743; Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd., WIPO Case No. D2014-1537; and Compagnie Générale des Etablissements Michelin v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-2234. In each of those decisions, the panel found that the Respondent had not used or made demonstrable preparations to use the domain name in connection with a bona fide or legitimate use of the domain name.
In this case, the Respondent argues to the contrary, that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services under the Policy, specifically it is providing certification of email services which will be free for both the sender and receiver of emails. By using the disputed domain name as a “back end, non-public email server in order to route emails for the storing of metadata there is no public use of the domain name, no diversion of website traffic from the trade mark holder and no intent to profit related to the use or trafficking of the subject domain name that its business model is a legitimate business model under the UDRP policy”. The Respondent claims that by providing the free use of its domain names and limiting the use of the domain name to route and capture email metadata is making a legitimate fair use.
The Panel does not accept the Respondent’s submission in this regard. In the Panel’s view, the Respondent is using the disputed domain name for a commercial purpose. The evidence of the Complainant is quite clear that the Respondent has no rights or legitimate interests in the disputed domain name and which entitles it to use it in the course of its business.
Accordingly, the Panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Complainant submits that the reason that the Respondent registered the disputed domain name is “precisely because he knew the well-known character of the trade mark AIR FRANCE” and that it did so knowingly having notice of the Complainant’s trade mark rights.
It also argues that the Respondent registered the disputed domain name as a gTLD with a generic meaning i.e. “.email” so that it cannot be considered by Internet users as being related to email services rather it has a specific meaning i.e. that it is related to or may be the business which is offering these email services. Therefore, Internet users will necessarily associate the disputed domain name with the Complainant.
The Complainant relies upon the Respondent’s pattern of conduct in registering domain names composed of the new gTLD “.email” and using well-known trade marks as part of the domain names. The Complainant relies upon at least 40 UDRP, ADR and URS decisions regarding the Respondent’s registration of .email domain names using well-known trade marks. For the Complainant this in itself constitutes a pattern of bad faith registration.
The Complainant also argues that the use of the disputed domain name as a passive holding constitutes bad faith use. Previous UDRP panels have found that the passive use of a domain name without any active attempt to sell or contact the trade mark owner does not prevent a finding of bad faith.
The Complainant relies upon a previous UDRP decision, Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639, involving the Complainant where the panel found that the Complainant’s trade marks have a strong reputation and are widely known. It was therefore not possible to conceive of any “plausible, actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”.
The Complainant claims that the circumstances surrounding the registration of the disputed domain name have the effect of “tarnishing the Complainant’ brand image”.
The Respondent in its Response takes a contrary view, to the effect, that it registered and is using the disputed domain name in good faith. It argues that it has not intended to profit in any way relating to the use of the domain name as a trade mark. It argues that the fact the Respondent intends to be a “for profit business in general from the use of the many generic domains it has registered in no way supports the giant leap that it intends to profit from the subject domain or trade mark by deceiving internet users”. It argues that it is not using the disputed domain name to defraud the public by creating a false impression that the disputed domain name is the Complainant’s genuine Internet name.
The Panel having read the Respondent’s submissions nevertheless finds that the Respondent fails to overcome the Complainant’s arguments in respect of bad faith and in particular that the Respondent registered the domain name precisely because it was aware of the well-known character of the trade mark AIR FRANCE. The Panel finds that the disputed domain name was registered in bad faith.
The passive holding of the domain name does not prevent a finding of bad faith use, therefore the Panel finds that the disputed domain name is being used in bad faith.
The Panel is also persuaded in this view by the evidence of the numerous domain names registered by the Respondent as “.email” gTLDs using well-known trade marks. The Panel therefore follows earlier UDRP decision, O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399.
The Panel finds for the Complainant in respect of this element.
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 <airfrance.email> be transferred to the Complainant.
Clive Duncan Thorne
Date: May 14, 2015