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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / boriiis boriiis

Case No. D2021-0767

1. The Parties

The Complainant is Société Air France, France, represented by MEYER & Partenaires, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / boriiis boriiis, France.

2. The Domain Name and Registrar

The disputed domain name <airfrance.finance> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On March 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 17, 2021, 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 March 18, 2021.

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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent sent an informal communication to the Center on March 19, 2021. The Center formally notified the Commencement of Panel Appointment Process to the Parties on April 9, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on April 16, 2021. 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 following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a global airline headquartered in France.

The Complainant is the owner of several trade marks for AIR FRANCE including the following:

- International trade mark AIR FRANCE Registration, No. 828334, registered on October 20, 2003.

The Complainant is also the owner of many domain names reflecting its trade mark including <airfrance.com>.

The Domain Name was registered on March 5, 2021. The Domain Name resolves to the Registrar’s parking page with pay-per-click (“PPC”) links to third party websites related to Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the AIR FRANCE trade mark in which the Complainant has rights.

The Complainant asserts that the Respondent has no rights to or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent has never been known by the term “airfrance” or the term “air france”. The Complainant also declares that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorised to use the AIR FRANCE trade mark. Finally, the Complainant also contends that the Respondent’s use of the Domain Name cannot be considered as being a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Complainant contends that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark and the Respondent could not plausibly have ignored the reputation of the Complainant’s trade mark AIR FRANCE as it is well-known. The Complainant also alleges that the Respondent is using the Domain Name in bad faith. The Complainant asserts that the use of the Domain Name to resolve to the Registrar’s parking page comprising PPC links to third party websites demonstrates the Respondent’s bad faith especially given the renown of the Complainant’s trade mark. The Complainant also points to the circumstances surrounding the registration details for the Domain Name, which appear to be deliberately inaccurate and the initial use of WhoIs privacy services as a further indication of bad faith. The Complainant thus considers that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Center received an informal email communication on March 19, 2021, stating:

f[***] off this is my right to buy an available domain . if airfrance want this domain they can paid 2 BTC for the transfer.

6. Discussion and Findings

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in AIR FRANCE.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark AIR FRANCE in which the Complainant has rights.

Given that the Domain Name incorporates the AIR FRANCE trade mark in its entirety with the mere difference that there is no separation between the terms “air” and “france”, and noting that it is not possible to produce a space in a domain name, it is clear that the AIR FRANCE trade mark of the Complainant is reproduced in the Domain Name in a manner that can effectively be said to be identical.

Then there is the addition of the generic Top-Level Domain (“gTLD”) “.finance”. As is widely accepted, the addition of a gTLD such as “.finance” is largely seen as merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] 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 trade mark or service mark at issue.

Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.

The Complainant has stated that there is no business or legal relationship between the Complainant and the Respondent and that it has not authorized the Respondent to make any use of its trade mark. There is no evidence that the Respondent is commonly known by the Domain Name.

The Domain Name is currently used to direct to the Registrar’s parking page including PPC links targeting the industry of the Complainant and its competitors. Given the overall circumstances of the case, the Panel concludes that the use of the Domain Name cannot be seen as a legitimate noncommercial or fair use of the Domain Name nor can it be seen as a bona fide offering of goods or services. In addition, the Panel notes that the composition of the Domain Name carries a risk of implied affiliation. See section 2.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark 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 trade mark 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 [the respondent’s] website or other on-line 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 circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name is confusingly similar to the trade mark AIR FRANCE of the Complainant and this cannot be a coincidence.

The trade mark AIR FRANCE of the Complainant is not a descriptive or common term and its protection as a trade mark in a number of jurisdictions significantly predates the registration of the Domain Name by the Respondent. The fact that the Respondent chose to register the Domain Name incorporating the exact trade mark of the Complainant, with the mere omission of a separation of a space between the terms “air” and “france”, leads the Panel to find it inconceivable that the Respondent would not have been well aware of the Complainant and its trade mark at the time of registration of the Domain Name, especially given the significant renown of the Complainant’s trade mark. The Panel finds that when registering the Domain Name, the Respondent had the Complainant’s trade mark in mind and targeted it specifically.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is being used in bad faith.

The Domain Name is currently used to direct to the Registrar’s parking page with PPC links targeting the Complainant’s industry and referring to some of its competitors. The Respondent cannot disclaim responsibility for content appearing on the website associated with its Domain Name even if such content is generated automatically. Given the overall circumstances and in the absence of a Response from the Respondent the Panel finds that the current use of the Domain Name constitutes use of the Domain Name in bad faith. The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy.

The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is being used in bad faith.

Furthermore, in light of the content of the informal and disrespectful email communication sent by the Respondent to the Center on March 19, 2021, the Respondent seemingly had the purpose of selling the Domain Name to the Complainant for an amount well in excess of the documented out-of-pockets costs.

Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.

Thus, the Panel finds that the Domain Name has been registered and is also being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <airfrance.finance> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: April 30, 2021

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