WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Domain Administrator, See PrivacyGuardian.org / Steve David, Kamran Khan, Muhammad Faisal
Case No. D2018-1986
1. The Parties
The Complainant is Société Air France of Roissy, France, represented by MEYER & Partenaires, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“Unites States”) / Steve David of Dubai, United Arab Emirates; Kamran Khan of Karachi, Pakistan; Muhammad Faisal of Karachi, Pakistan.
2. The Domain Names and Registrar
The disputed domain names <airfrance-com.win> (“the first disputed domain name”) and <airfrancewin.win> (“the second disputed domain name”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 September 13, 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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on October 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 passenger airline and freight company. The original company was formed in 1933 and the current structure was established in 1997. The Complainant has a fleet of 583 airplanes and flies to 231 cities in 103 countries. Its revenue in 2015 was approximately EUR 26 billion.
The Complainant’s trading style is AIR FRANCE. In addition to its ownership of many domain names which incorporate its trading style, including <airfrance.com>, the Complainant owns numerous trade marks for AIR FRANCE. These include the following;
- International trade mark for AIR FRANCE, registration no. 828334, registered on October 20, 2003 in multiple classes;
- Pakistan trade mark for AIR FRANCE, registration no. 210618, registered on June 18, 2005 in class 38;
- United Arab Emirates trade mark for AIR FRANCE, registration no. 57668, filed on December 15, 2003 in class 35.
The first disputed domain name was registered on February 14, 2018. It does not point to any active webpage. The second disputed domain name was registered on June 14, 2018 and points to a webpage which comprises solely (and in very small type) the letters “omg”. The Complainant provided evidence of a phishing campaign undertaken through the second disputed domain name.
5. Parties’ Contentions
The Complainant says that the disputed domain names are identical or confusingly similar to its AIR FRANCE trade marks, details of three of these marks being set out above. The use or absence of punctuation marks will not, in itself, prevent the disputed domain names from being considered to be identical to its trade marks. Moreover, the additional letters “com” in the first disputed domain name and “win” in the second disputed domain name will be perceived as references to generic Top-Level Domains (“gTLDs”) and are insufficient to avoid a finding of confusing similarity. Accordingly, the disputed domain names should be considered confusingly similar to the Complainant’s AIR FRANCE trade marks.
The Complainant asserts that the Respondent1 has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not related in any way to the Complainant’s business nor does it carry out any activity for it. Moreover, the Respondent is not currently, and has never been, known by any name corresponding to the disputed domain names. No license or authorization has been granted to the Respondent to make any use of, or apply for registration of, the disputed domain names. Moreover, whilst both disputed domain names are effectively inactive, the second disputed domain name was formerly used fraudulently in order to collect the personal data of the Complainant’s customers. This does not comprise a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of it. The Complainant therefore considers that it has made out a prima facie case that the Respondent lacks rights or legitimate interests with respect to the disputed domain names.
Lastly, the Complainant says that the disputed domain names were registered and used in bad faith. The Complainant has widespread repute in its AIR FRANCE trade mark and the Respondent could not have been unaware of the Complainant when it registered the disputed domain names. The use by the Respondent of a privacy service to hide its identity is a further indication of bad faith. Moreover, the Respondent has been involved in numerous previous proceedings under the Policy, relating to the registration by it of domain names which incorporated well-known trade marks of third parties, as well as those of the Complainant, in which it failed to establish that its domain name registrations were in good faith.
The first disputed domain name does not resolve to an active website and second disputed domain name resolves to an effectively blank page. Such passive holding is capable in itself of amounting to bad faith use; see Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287 and Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447.
In addition, in late June 2018, the second disputed domain name pointed to a website which was part of a phishing campaign. The fraudulent content was eventually removed after the Complainant’s advisors wrote to the hosting provider. This constitutes a further instance of bad faith use of the second disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6.1 Consolidation of Respondents
The Complainant says that the additional contact information disclosed by the Registrar on September 6, 2018 purports to disclose separate registrants for the first and second disputed domain names, namely Kamran Khan and Steve David. However, the email address used by Kamran Khan is the same as that used by another individual who has been involved in other proceedings under the Policy against the Complainant, namely a Muhammad Faisal. Both these parties have previously been respondents in other proceedings brought by the Complainant under the Policy. Similarly, the email address used by Steve David is the same as another party who has been a respondent in other proceedings under the Policy (albeit not involving domain names which incorporate the Complainant’s trade marks) namely a Usama Ramzan.
The Complainant asserts that all these individuals are closely connected and may, in reality, be the same person. In support of this assertion it points out that both disputed domain names have been registered through the same Registrar and use the same privacy proxy provider. Furthermore, both disputed domain names have the letters “win”, added after the Complainant’s trade mark. In addition, in another decision under the Policy, namely Delta Air Lines, Inc. v PRIVATE EYE / MUHAMMAD FAISAL / WASEEM A. ALI / MICRON WEB SERVICES / STEVE DAVID / STEVE, LLC / LISA ALEX / IRFAN KHAN / HAMMY KAY,NAF Claim No. 1761239, Muhammad Faisal and Steve David were among the joint respondents and the Panel found that the listed entities were jointly controlled by a single respondent using multiple aliases.
Having regard to the above facts and because, it says, it would be unfairly detrimental to the Complainant to have to bring a separate complaint in respect of each disputed domain name, the Complainant asks the Panel to find there is, in reality, only one Respondent to these proceedings. In support of its request, the Complainant draws attention to the decisions of previous panels under the Policy, including that in Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No.D2004-0659, where the panel consolidated proceedings against notionally separate respondents on the basis that the relevant domain names were most likely controlled by a single party.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”) explains that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
Section 4.11.2 also sets out a number of factors to which panels have had regard when considering whether consolidation is appropriate, many of which are pertinent to these proceedings. In particular, there is a sharing of contact information between ostensibly separate individuals, the same Registrar has been used in respect of similarly-named domain names, there are similar naming patterns, there is a pattern of similar behavior by the Respondents and neither of the disputed domain names is being actively used.
The circumstances accordingly point to “Steve David”, “Kamran Khan” and “Muhammad Faisal” being aliases for a single individual or, at least, the disputed domain names being under the control of a single party. The Panel therefore permits consolidation of the Complainant’s claims in respect of the first and second disputed domain names.
6.2 Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its trade mark registrations for AIR FRANCE, details of three of these marks having been set out above. This establishes its rights in the mark.
For the purpose of considering whether the disputed domain names are identical or similar to AIR FRANCE the gTLD “.win” is disregarded as this is a technical requirement of registration. Both disputed domain names comprise the Complainant’s trade mark in full together with (in the case of the first disputed domain name) the addition of a hyphen and the letters “com” and (in the case of the second disputed domain) the additional letters “win”. The hyphen is of no significance and “com” and “win” are likely to be perceived as relating in some way to the gTLDs “.com” and “.win”. In any event, these additional components of the disputed domain name do not serve to render them dissimilar from the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark…the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Both disputed domain names incorporate the entirety of the Complainant’s AIR FRANCE trade mark. The Panel accordingly finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 4(c)(ii) of the Policy is inapplicable; there is nothing to suggest that the Respondent has been commonly known by either of the disputed domain names. Moreover, as neither of the disputed domain names have ever resolved to a substantial website, they are not being used in the sense required by paragraph 4(c)(i) and 4(c)(iii) of the Policy.
Section 2.2 of the WIPO Overview 3.0 provides examples of activities which might constitute a bona fide offering of goods and services. These would generally require not only “clear contemporaneous evidence of bona fide pre-complaint preparations” but also evidence “generally pointing to a lack of indicia of cybersquatting intent”. There is nothing to suggest that the Respondent would be capable of using the domain names for a bona fide offering of goods and services; in fact, all indications point to a cybersquatting intent.
As the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in a domain name, the burden of production on this element of the Policy shifts to the Respondent. The Respondent has not submitted a response and so it has, inevitably, failed to satisfy it. The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has set out a number of separate bases as to why the Respondent should be found to have registered and used the disputed domain names in bad faith. Its assertions with respect to its passive holding of the disputed domain names require consideration in the context of section 3.3 of the WIPO Overview 3.0, which explains that;
“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”.
Applying these factors, briefly, to the current circumstances; (i) the Complainant’s mark is very well-known and the Respondent will have been aware of it as at the time of its registration of the disputed domain names; (ii) the Respondent has not replied to the Complaint; (iii) the Respondent has sought to conceal its identify through use of a privacy service; and (perhaps most importantly) (iv) it is impossible to think of any good faith use to which the disputed domain names could be put, especially in light of the evidenced phishing campaign to which the second disputed domain name had been put, itself being an independent ground for the Panel establishing Respondent registration and use in bad faith.
The Panel therefore finds that the Respondent has registered and used the disputed domain names in bad faith. It is, accordingly, not necessary to consider the Complainant’s additional submissions.
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 names <airfrance-com.win> and <airfrancewin.win> be transferred to the Complainant.
Date: November 2, 2018
1 For reasons explained at section 6.1 below, notwithstanding that there are three individuals named as Respondents in the heading of the Complaint, they are referred to in this Decision as a single Respondent.