WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Whois Privacy Corp.
Case No. D2017-2143
1. The Parties
The Complainant is Société Air France of Roissy CDG Cedex, France, represented by MEYER & Partenaires, France.
The Respondent is Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <air-france-billet.com>, <airfrance-billet.com>, <airfrance-billets.com>, <airfrance-billets-2017.com>, <airfrance-billetz.com>, <airfrance-claim.com>, <airfrance-concours.com>, <airfrance-package.com>, <airfrance-point.com>, <airfrance-prime.com>, <airfrance-pro.com>, <airfrance-promo.com>, <airfrance-promotion.com>, <air-france-ticket.com>, <airfrance-ticket.com>, <airfrance-17.com>, <air-france-2017.com>, and <airfrance-2017.com> are registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 3, 2017, 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.
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 the Respondent of the Complaint, and the proceedings commenced on November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on December 18, 2017. 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 dates of the Domain Names registrations were confirmed by the Registrar to be as follows:
1. <airfrance-billets.com> was created on September 8, 2017,
2. <airfrance-ticket.com> was created on September 17, 2017,
3. <air-france-billet.com> was created on September 21, 2017,
4. <airfrance-point.com> was created on October 7, 2017,
5. <airfrance-package.com> was created on October 13, 2017,
6. <air-france-ticket.com> was created on September 20, 2017,
7. <airfrance-17.com> was created on October 3, 2017,
8. <airfrance-2017.com> was created on September 27, 2017,
9. <airfrance-billet.com> was created on September 13, 2017,
10. <airfrance-billets-2017.com> was created on September 18, 2017,
11. <airfrance-billetz.com> was created on October 3, 2017,
12. <airfrance-claim.com> was created on October 3, 2017,
13. <airfrance-concours.com> was created on September 18, 2017,
14. <airfrance-prime.com> was created on October 2, 2017,
15. <airfrance-pro.com> was created on October 5, 2017,
16. <airfrance-promo.com> was created on October 1, 2017,
17. <airfrance-promotion.com> was created on October 5, 2017,
18. <air-france-2017.com> was created on September 19, 2017.
The Panel also conducted an independent search to determine that the Domain Names resolve to pages with "error" messages, and the websites currently appear to be inactive.
The Complainant provided evidence of multiple trademark registrations for the mark AIR FRANCE including, inter alia, International Registration No. 828334 (registered on October 20, 2003) that (although not required) predate the dates of the Domain Names registrations in regard to a variety of travel services.
The Complainant also provided evidence of correspondence and complaints with the website hosting platform that lead to the take-down of some of the Respondent's other 'air france' formative domain names.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant's mark, as well as the 'take-down' procedures, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complaint alleges that the Complainant, Société Air France, is a French airline passenger and freight company known as one of the largest in the world. The company was formed in 1933 with a merger of a number of companies. As a result of the merger between Air Inter and Air France in 1997, "Compagnie Nationale Air France" becomes "Société Air France". Air France is also a member of the Skyteam alliance since 2000. In 2003, another alliance formed between two companies, Air France and KLM.
The Complaint claims that with a fleet of 583 airplanes, Air France serves 231 cities in 103 countries and represents 1,500 flights daily. Further, in 2015, Air France-KLM group carried more than 79 million passengers and had a 26.05 billion EUR revenue.
The Complainant has also registered or reclaimed many generic top-level domain names formed with the trademark AIR FRANCE plus a dictionary word. All of these names are redirecting the Complainant's customers to her institutional websites. See for instance:
The Complainant operates an international web portal at "www.airfrance.com"
The Complaint also alleges that:
"The Complainant was informed that a company named Whois Privacy Corp, apparently located in the Bahamas registered the litigated domain names from September 8, 2017 to October 13, 2017 … WHOISGUARD PROTECTED is the registrant, administrative and technical contact for the eighteen domain names. According to the information displayed on his own website … Whois Privacy Corp, is a company providing Whois proxy and privacy services, located in the Bahamas. So, it is more likely that this company is not the real owner of the domain names, who wants apparently to remain anonymous. Consequently, Complainant considered the chances for the registrant to reply to an official letter as being almost inexistent."
The Complaint alleges that the Respondent is not making a noncommercial or fair use of the Domain Name. The Respondent is using the Domain Name to defraud persons since the Complainant received notifications from clients complaining about a "deceptive survey visibly undertaken on behalf of Air France".
The Complainant provided evidence of the relevant pages that appeared also on Facebook.
Further, although the Domain Names resolve to 'error pages' the Complainant argues that this does not prevent a finding that the Domain Names were registered and are being used in bad faith. In addition, the list of multiple registrations proves a 'pattern of bad faith", and the Complainant provided evidence of take down procedures instituted with the platform on which websites abusing the Complainant's trademarks were hosted.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark AIR FRANCE, in respect of a wide range of travel related goods and services. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the dictionary terms or descriptive words such as "ticket", "package" and the like to the term "airfrance" does not prevent a finding of confusing similarity. Therefore, the Domain Names <air-france-billet.com>, <airfrance-billet.com>, <airfrance-billets.com>, <airfrance-billets-2017.com>, <airfrance-billetz.com>, <airfrance-claim.com>, <airfrance-concours.com>, <airfrance-package.com>, <airfrance-point.com>, <airfrance-prime.com>, <airfrance-pro.com>, <airfrance promo.com>, <airfrance-promotion.com>, <air-france-ticket.com>, <airfrance-ticket.com>, <airfrance-17.com>, <air-france-2017.com>, and <airfrance-2017.com> could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. The Domain Names were registered and is being used in bad faith as a basis for phishing activity, and represent a pattern of bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent's registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for the well-known mark AIR FRANCE. This finding is consistent with other Panel decisions that have found the mark to be well-known, see e.g. Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337, regarding <airfrancereservation.com>: "the Complainant has rights in the mark AIR FRANCE registered for numerous goods and services in multiple jurisdictions. Complainant's mark is not only registered and used in the course of trade in numerous countries, but also recognized as a well-known mark" and that "the mark has acquired considerable fame and recognition".
Further, the Panel finds the consolidation of all the disputed Domain Names to be determined by a single decision under the facts of this case to be fair and reasonable.
The Panel finds that the Domain Names are confusingly similar to the Complainant's trademark. Further, the Panel finds that the mere addition of the generic and/or descriptive terms – all of which are commonly used in the field of travel – in each of the Domain Names does not change the overall impression of the designation of each as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant's trademark and if anything, enhances it to suggest the offer of the Complainant's goods and services on-line. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "[t]he incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
This is also consistent with Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which states:
"Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the fame of the Complainant's trademark and reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Names with full knowledge of the Complainant's trademark and uses them for deceptive purposes, including phishing and/or misleading and diverting Internet traffic, constituting bad faith.
The Panel also agrees with the Complainant's argument that even though the Domain Names resolve to inactive pages, this not preclude a finding of registration and use in bad faith where: "…it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate"(Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This is also consistent with Section 3.3 of the WIPO Overview 3.0, which states:
"From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."
Further, the Panel finds that the registration of variations on the theme support a "pattern" of bad faith, and that doing so with the use of the privacy registrations for all the Domain Names, only supports such inference. This is consistent with Section 3.6 of the WIPO Overview 3.0, which states that:
"There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel's assessment of bad faith.
In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements.
Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference."
In this case, no such inference was refuted by the Respondent.
Given the evidence of the Complainant's prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant, the evidence of a deceptive survey, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <air-france-billet.com>, <airfrance-billet.com>, <airfrance-billets.com>, <airfrance-billets-2017.com>, <airfrance-billetz.com>, <airfrance-claim.com>, <airfrance-concours.com>, <airfrance-package.com>, <airfrance-point.com>, <airfrance-prime.com>, <airfrance-pro.com>, <airfrance-promo.com>, <airfrance-promotion.com>, <air-france-ticket.com>, <airfrance-ticket.com>, <airfrance-17.com>, <air-france-2017.com>, and <airfrance-2017.com> be transferred to the Complainant.
Ellen B Shankman
Date: December 26, 2017