WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Mai-Britt Lien
Case No. D2017-2409
1. The Parties
The Complainant is Société Air France of Roissy, France, represented by MEYER & Partenaires, France.
The Respondent is Mai-Britt Lien of Strusshamn, Norway.
2. The Domain Name and Registrar
The disputed domain name <afr-airfrance.com> is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 23, 2018.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 5, 2018. 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 founded in 1933 and currently known as one of the largest in the world.
The Complainant is the owner of several trademarks composed by the term "Air France", in particular a French trademark No. 99811269, registered on September 6, 1999, and the International trademark No. 828334, registered on October 20, 2003, designating Norway. "Air France" is also the main and distinctive element of the Complainant's trade name since its foundation.
The Complainant owns and operates other domain names incorporating its AIR FRANCE mark, such as <airfrance.com> and <airfrance.no>, respectively registered in 1994 and 1999.
The disputed domain name was registered by the Respondent on November 25, 2016.
The Panel accessed the disputed domain name on February 19, 2018, which didn't resolve to any active website.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. "Société AIR FRANCE" is the trade name of the Complainant, used in commerce since 1933. The Complainant has also filed many national, community and international trademarks consisting of or including the wording "air france". The trademark AIR FRANCE has been recognized as well-known in several UDRP decisions. It is well established that the use or absence of punctuation marks, such as hyphens or spaces, does not alter the fact that a domain name is identical to a mark. The prefix "airfrance" of the disputed domain name reproduces letter-by-letter the Complainant's trademark. The suffix "afr" is the ICAO ("International Civil Aviation Organization") code of the Complainant, which undoubtly accentuates the risk of confusion between the Complainant's trademark and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related in any way to the Complainant's business: he is not one of its agents and do not carry out any activity for, or have any business with the Complainant. To the Complainant best knowledge, the Respondent is not currently and has never been known under the wording "airfrance", "air france" or "afr". No license or authorization has been granted to the Respondent to make any use or to apply for registration of the disputed domain name. In addition, the disputed domain name activates a "404 error" page since its registration on November 25, 2016, which cannot be considered as being a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).
(iii) The disputed domain name was registered and is being used in bad faith. The notoriety of the Complainant's trademark creates a prima facie presumption that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the Complainant's mark. The Respondent could not have ignored the Complainant's international reputation at the time it registered the disputed domain name. An email and a formal letter have been sent by the Complainant to the Respondent using the WhoIs database information, and both returned undelivered because the references displayed there were apparently unallocated. The most plausible explanation is that the Respondent provided false and misleading information to register the disputed domain name. Such maneuver also demonstrates bad faith. It may also be argued that the Respondent is passively holding the disputed domain name. Panels have found that the apparent lack of so-called "active use" of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. Combined to supplemental circumstances such as the Complainant's well-known trademark and the bad faith registration of the disputed domain name, the Complainant claims that the disputed domain name is also being used in bad faith. It is also plausible to imagine that the disputed domain name was registered for emailing purposes, especially considering that a DNS lookup check with online tools demonstrates that the disputed domain name is associated with several email servers. Furthermore, considering that the Respondent actively configured his MX servers, the Complainant concludes that the Respondent is effectively using such emails for some unclear reason. And it is very hard to imagine a good faith use of an email address ending with "@afr-airfrance.com" by the Respondent. All these surrounding circumstances support the idea that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, and has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "airfrance" and "afr" are terms directly connected with the Complainant.
Annex F to the Complaint shows an international registration of the AIR FRANCE trademark obtained by the Complainant under the Madrid Protocol in 2003.
The trademark AIR FRANCE is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant's trademark by the addition of the prefix "afr", as well as of the generic Top-Level Domain ("gTLD") ".com".
Previous UDRP panels have consistently found that descriptive additions (such the acronym "afr", commonly used as the ICAO code that specifically identifies the Complainant's airline services) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of the hyphen symbol or of the gTLD suffix such as ".com" are typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Considering that there is no active webpage linked to the disputed domain name and no answer was provided to the cease and desist letter previously sent by the Complainant, nor a Response to the present Complaint, the Panel finds that there is no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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.
When the disputed domain name was registered by the Respondent (in 2016) the trademark AIR FRANCE was already registered by the Complainant in dozens of countries, presenting a well-known status in connection to the Complainant's airline services.
The disputed domain name encompasses the trademark AIR FRANCE together with a hyphen and with the acronym "afr", commonly used as the ICAO code that specifically identifies the Complainant's airline services.
Therefore, the Panel concludes that it is highly unlikely that the Respondent was not aware of the Complainant's trademark and that the adoption of the expression "afr-airfrance" was a mere coincidence.
Indeed, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel's findings that the disputed domain name is also being used in bad faith.
In the Panel's view, the circumstances that the Respondent (a) adopted a well-known trademark to compose the disputed domain name, together to its respective acronym; (b) is not presently using the disputed domain name; and (c) has not provided any justification for the use of such third party trademark, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the term "afr-airfrance" by the Respondent, are enough in this Panel's view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 disputed domain name <afr-airfrance.com> be transferred to the Complainant.
Date: February 19, 2018