WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Domain Administrator, See PrivacyGuardian.org / Rohit Patel, MAC
Case No. D2018-0014
1. The Parties
The Complainant is Société Air France of Roissy Charles-de-Gaulle, France, represented by Meyer & Partenaires, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Rohit Patel, MAC of Anand, Gujarat, India.
2. The Domain Name and Registrar
The disputed domain name <airfrance2017.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2018. On January 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 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 9, 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 amendment to the Complaint on January 12, 2018.
The Center verified that the Complaint together with the amendment to 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 January 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2018.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 19, 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 the European Union trade mark No. 002528461, registered on October 7, 2003, and the international trademark No. 1123935, registered on May 25, 2012. “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, including <airfrance.com> and <airfrance2013.com>, registered respectively in 1994 and 2007.
The disputed domain name was registered by the Respondent on July 19, 2017.
According to the evidence of the Complainant, at the time of filing of the Complaint the disputed domain name did not resolve to an active website. The Panel accessed the disputed domain name on March 3, 2018, at which time the disputed domain name still did not 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 “2017” is by itself not sufficient to eliminate the confusing similarity, the trademark AIR FRANCE being the only distinctive part of the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Rohit Patel, MAC is the registrant, administrative, and technical contact for the disputed domain name. The Complainant considered the chances for the privacy-protected registrant to reply to an official letter as being almost inexistent.
(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. Furthermore, the Respondent used a WhoIs proxy service to keep private its personal identity. The Complainant acknowledges that the use of such privacy service is not inherently evidence of bad faith. Nevertheless, when such concealment is used to escape one’s legal responsibility, it might then confirm a fraudulent intention. The Complainant claims that the concealment of the Respondent’s identity should be construed as a fraudulent manoeuvre demonstrating its bad faith registration. The Complainant conducted searches about the Respondent and found that the email address used to register the disputed domain name was also used to register at least eight other domain names using the well-known trademark MARLBORO together with descriptive terms. The successive registration of several domain names within a few days period, adding generic terms like “2017”, “packs”, “primes”, etc., together with well-known trademarks and no conceivable legitimate use, nor authorization or right to register and use them, shows that the Respondent has visibly engaged in a pattern of conduct of bad faith registrations. The disputed domain name does not resolve to any active website and generates an error 403 web page, stating that the web server is trying to access a file that does not exist, or that exists but is forbidden or that has been configured improperly. In such context, the return of a “403 error” remains suspect and might indicate a concealed, if not illegitimate, activity, which is available to some Internet users and unavailable for others (including the Complainant and its legal counsel). One may also argue that such use of the disputed domain name constitutes bad faith use, as “passive holding” and establish that such a passive use of the disputed domain name is also revealing that the Respondent has no serious intent to use it for offering goods and services or promoting a noncommercial cause. In any case, the present use of the disputed domain name shows no evidence of good faith. On the contrary, the presence of a suspicious “403 error” page that randomly generates strings of characters may let the user to think that the Complainant is linked in one way or another to this domain name but neglects its online communication, disturbing its online presence and brand image. Furthermore, the disputed domain name was registered about six months ago, which would have been sufficient for the Respondent to set properly the activation of the name, at least a disclaimer message, if it had a good faith use in mind. One may hardly conceive any legitimate use from the Respondent of the disputed domain name. As a consequence, the Complainant claims that the Respondent is not making any good faith use of the disputed domain name.
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” is a term directly connected with the Complainant.
Annexes E1 and E2 to the Complaint shows a European Union and an international registration of the AIR FRANCE trademark obtained by the Complainant in 2003 and in 2012.
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 suffix “2017”, as well as of the generic Top-Level Domain (“gTLD”) “.com”.
Previous UDRP panels have consistently found that descriptive additions (such the indication of the year of registration of the disputed domain name: “2017”) 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 a gTLD suffix such as “.com” is 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 Response was provided 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 satisfied 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 2017) 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 the indication of the year in which it was registered: “2017”.
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 “airfrance2017” 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 with a descriptive term; (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 legitimate adoption of the term “airfrance2017” 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 <airfrance2017.com> be transferred to the Complainant.
Date: March 5, 2018