WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Registration Private, Domains By Proxy, LLC / Name Redacted
Case No. D2018-0005
1. The Parties
The Complainant is Société Air France of Roissy Charles-de-Gaulle, France, represented by Meyer & Partenaires, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <hop-air-france.com> 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 January 4, 2018. On January 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2018, 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 January 8, 2018 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 January 12, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2018.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on February 21, 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 the French airline passenger and freight company Société Air France. The company was created on October 7, 1933 and is one of the largest airline companies in the world. With a fleet of 583 airplanes, Air France serves 231 cities in 103 countries and makes 1,500 flights every day.
The Complainant holds the following trademarks:
- International trademark registration AIR FRANCE, no. 828334, registered on October 20, 2003 and protected in classes 6, 8, 9, 12, 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;
- International trademark registration AIRFRANCE, no. 1123935, registered on May 25, 2012 and protected in classes 9, 16, 18, 35, 36, 37, 38 and 39.
The Complainant is operating an international web portal at “www.airfrance.com”, on which its clients can find information about the services offered by the Complainant and can also book a flight.
The French company HOP! is a subsidiary of Société Air France created in 2012; it edits a web portal available at “www.hop.com” and uses the term HOP! as a company name and as a trade name.
The Complainant registered the domain name <airfrancehop.com> for defensive purposes in 2014.
The Complainant has registered domain names composed of the AIR FRANCE trademark with the addition of the name of a company belonging to the same group or of a partner, such as the domain names <airfrancetransavia.com>, <klm-airfrance.com>, and <airfrance-klm.com>.
The disputed domain name <hop-air-france.com> was registered on November 20, 2017 using a privacy shield service. After the filing of the Complaint, the Registrar disclosed the personal data of the underlying registrant. It appears that it was the name of an employee of the Complainant. This person denied that it was related to the registration of the disputed domain name.
The Complainant asserts that the email address mentioned on the Whois had never been used by the employee, that the phone number was involved in another online scam reported by several victims on the Internet and that the postal address corresponds to the seventh district’s town hall of Paris.
The email server of the disputed domain name is configured to be active. Indeed, the Complainant was warned that two companies have been contacted by someone pretending to be an employee at HOP! and using the email address “[. . .]@hop-air-france.com” to obtain a consumer account with payment facilities. There does not appear to be any active website associated with the disputed domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <hop-air-france.com> is identical or at least confusingly similar to the trademarks AIR FRANCE and AIRFRANCE.
It relies on the prior UDRP decision, Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 considering that “[t]he 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 element “air-france” of the disputed domain name <hop-air-france.com> reproduces letter-by-letter the Complainant’s AIR FRANCE trademarks whereas “hop” reproduces letter-by-letter the Complainant’s subsidiary company name “HOP!”. This combination clearly increases the risk of confusion between the Complainant’s trademarks and the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Indeed, the Respondent is not related in any way to the Complainant's business. It is not currently and has never been known under the wording “airfrance” or “air france” or any of their potential combination. No license or authorization has been granted to the Respondent to register the disputed domain name.
The Complainant relies on the prior UDRP decisions Guerlain SA v. Peikang, WIPO Case No. D2000-0055; Crédit Industriel et Commercial v. Hola Domains, Hola Dominios Limitada, WIPO Case No. D2017-1457; and Hertz System, Inc. v. WhoIs Privacy Protection Service, Inc. / Tom Fitzpatrick, WIPO Case No. D2014-0479, to prove the lack of rights or legitimate interests.
The Complainant contends that the disputed domain name was registered in bad faith.
Indeed, the Complainant relies on the prior UDRP decisions Société Air France v. PrivacyProtect.org / Rob McGee, WIPO Case No. D2008-1917; 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. Arnaud Gautier, WIPO Case No. D2003-0830; Air France v. Kitchkulture, WIPO Case No. D2002-0158; and Société Air France v. Van Wijk & Mesker Holding BV, WIPO Case No. D2002-0028, which recognized the well-known AIR FRANCE trademark.
The Respondent could not have ignored Air France’s international reputation at the time the Respondent registered the disputed domain name.
The Respondent uses a Whois proxy service to hide its personal identity. Regarding the previous case Confederation Nationale du Credit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByProxy.com, WIPO Case No. D2015-1699, such concealment in the banking field might confirm a fraudulent intention.
As explained above, this concealment seems to hide an identity theft. On a previous case Celgene Corporation v. Name Redacted, WIPO Case No. D2016-2151, it was decided that “the simple fact that the disputed domain name was registered using stolen personal information shows the disputed domain name was fraudulently registered for an illicit purpose”.
The Complainant contends that the Respondent’s operating of the disputed domain name constitutes bad faith use.
The disputed domain name resolves a “404 error” page edited by Google Inc.
The Respondent configured MX servers in order to create email addresses and to use the disputed domain name for emailing purposes. The Complainant was warned that two companies have been contacted by someone using the email address “[. . .]@hop-air-france.com” and pretending to be a purchasing manager at HOP!. The purpose was to obtain a consumer account and payment facilities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its registered AIR FRANCE trademark rights.
The disputed domain name <hop-air-france.com> is composed of the trade name HOP without punctuation and followed by the Complainant’s AIR FRANCE trademark separated by a dash. The Complainant’s AIR FRANCE trademark is clearly identifiable in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s AIR FRANCE trademarks. The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the well-known AIR FRANCE trademarks or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. The disputed domain name does not resolve to an active website and is used for what appears to be a fraudulent email scheme.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”
Given the worldwide well-known character of the AIR FRANCE trademarks, the Panel finds that the Respondent could not ignore the Complainant’s rights in the AIR FRANCE trademarks as well as the relation between the Complainant and its French subsidiary HOP! when it registered the disputed domain name. The addition of the trade and company name HOP to the AIR FRANCE trademark clearly copies the domain name <airfrancehop.com> registered by the Complainant in 2014 for defensive purposes.
The disputed domain name <hop-air-france.com> just changes the word order and adds dashes.
It is also in line with the domain name strategy of the Complainant of registering domain names composed of the AIR FRANCE trademark with the addition of the name of a company belonging to the same group or of a partner, such as the domain names <airfrancetransavia.com>, <klm-airfrance.com>, and <airfrance-klm.com>.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
The Panel wants to underline that the Respondent not only concealed its identity, using an identity proxy service, but apparently used the name of a third person, which may constitute identity theft.
Furthermore, the disputed domain name was used to send scam emails, pretending to be the Complainant. Such use of the disputed domain name is clearly in bad faith.
For all the above reasons, the Panel finds that the Complaint satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “was registered and is being used in bad faith” by the Respondent.
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, <hop-air-france.com>, be transferred to the Complainant.
Date: March 7, 2018
1 It appears that the disputed domain name has been fraudulently registered using the name of an employee of the Complainant. The Panel has determined that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar to transfer the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy, and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published due to exceptional circumstances.