WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Ali Dubai
Case No. D2016-2028
1. The Parties
Complainant is Société Air France of Roissy CDG Cedex, France, represented by MEYER & Partenaires, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Ali Dubai, Hamriyah of Sharjah, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <airfrance.site> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2016. On October 20 and 27, 2016 Respondent sent email communications to the Center.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on November 23, 2016. 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 has used the trade name Société AIR FRANCE since 1933. Complainant is the owner of numerous national, European Union and International trademarks consisting of or including the words AIR FRANCE for a wide variety of goods and services, including international trademark AIR FRANCE with registration number 828334 registered on October 20, 2003.
Since 2004, Complainant has operated a website located at “www.airfrance.com”.
Complainant’s AIR FRANCE trademark has been recognized as a well-known trademark in several UDRP cases.
The disputed domain name was registered on February 21, 2016 and, according to the evidence submitted by Complainant, it resolves to a parking page displaying pay-per-click links to websites of Complainant’s competitors.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s AIR FRANCE and AIRFRANCE trademarks, that Respondent has no rights or legitimate interests in respect of the domain name and that the disputed domain name was registered and used in bad faith.
Respondent did not formally reply to the Complainant’s contentions.
However, Respondent sent email communications to the Center on October 20 and 27, 2016 stating its willingness to transfer the disputed domain name to Complainant.
6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
While noting the Respondent’s unambiguous consent to transfer of October 20 and 27, 2016, the Panel elects to proceed to a substantive determination on the merits, especially in light of a separate UDRP proceeding previously brought against the Respondent, Morgan Stanley v. Ali Dubai, NAF Claim No. 1666081. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.13.
A. Identical or Confusingly Similar
Complainant has proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of numerous trademark registrations for the mark AIR FRANCE, and for the mark AIRFRANCE. With the exception of the non-distinguishing word “site” Complainant’s mark is included in its entirety in the disputed domain name.
The Panel finds that the disputed domain name is identical to Complainant’s trademark.
B. Rights or Legitimate Interests
Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See WIPO Overview 2.0, paragraph 2.1.
Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
In view of the international recognition of the AIR FRANCE trademark, it is inconceivable that Respondent was unaware of the existence of Complainant’s trademark rights at the time of registering the disputed domain name. Respondent is not related in any way to Complainant’s business and has not been authorized by Complainant to use or apply for registration of the disputed domain name. Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a pay-per-click “link farm” to host sponsored links related to Complainant’s field of business. Several of these links resolve to competitors’ commercial websites.
Respondent has not submitted any evidence showing that it has any rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Circumstances that “shall be evidence” of bad faith include facts indicating an intentional attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with another’s mark as to the source, sponsorship, affiliation, or endorsement of the website.
The widespread recognition of Complainant’s trademark makes it highly unlikely that Respondent had no knowledge of Complainant’s trademark rights at the time of registering the disputed domain name. Respondent’s use of Complainant’s trademark in a domain name that resolves to a pay-per-click “link farm” also evidences Respondent’s use of the domain name to intentionally attract Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s well-known trademark. In addition, Respondent has previously been found to have acted in bad faith in registering the domain name <morganstanley.site>, Morgan Stanley v. Ali Dubai, supra.
The Panel finds that the disputed domain name has been registered and used in bad faith.
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.site> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: December 14, 2016