WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Irfan Khan, Kamran Khan

Case No. D2018-0393

1. The Parties

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

The Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Irfan Khan of Lahore, Pakistan, Kamran Khan of Karachi, Pakistan.

2. The Domain Names and Registrars

The disputed domain name <ạirfrance.com> [xn--irfrance-mx0d.com] (hereinafter “<ạirfrance.com>”)¹ is registered with NameCheap, Inc. (“NameCheap”). The disputed domain name<airfrạnce.com> [xn--airfrnce-rx0d.com] (hereinafter “<airfrạnce.com>”) is registered with TurnCommerce, Inc. DBA NameBright.com (“NameBright.com”). NameBright.com and NameCheap are referred to collectively as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 21, 2018, the Center transmitted by email to the Registrar NameCheap a request for registrar verification in connection with the disputed domain name <ạirfrance.com>. On February 21, 2018, NameCheap 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 March 6, 2018 providing the registrant and contact information disclosed by the NameCheap, and inviting the Complainant to submit an amendment to the Complaint.

The Complainant filed an amended Complaint on March 9, 2018, identifying Irfan Khan as the Respondent for the disputed domain name <ạirfrance.com >. The Complainant included a second domain name in the amended Complaint, <airfrạnce.com >, identifying Kamran Khan as the registrant, and requesting consolidation. On March 13, 2018, the Center transmitted by email to the Registrar NameBright.com a request for registrar verification in connection with the disputed domain name <airfrạnce.com>. On March 15, 2018, NameBright.com 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 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, and having noted the appearance of prima facie grounds to submit the Complainant’s consolidation request to the Panel for final determination, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. Neither Respondent submitted a response. Accordingly, the Center notified the Respondents’ default on April 13, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on April 27, 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 air freight company, founded in 1933 and organized under the laws of France. The Complainant has traded under the AIR FRANCE name since 1933, and owns a number of trademark registrations for AIR FRANCE, including an international trademark for AIR FRANCE registered on October 20, 2003, No. 828334, which has application in more than 50 jurisdictions around the world. The Complainant also has registered a number of domain names reflecting its AIR FRANCE mark, including <airfrance.com>, and has maintained a commercial website at “www.airfrance.com” since 2004.

The disputed domain names were registered between February 12 and 14, 2018, according to the concerned Registrars’ WhoIs records. Each of the disputed domain names was registered using a privacy protection service. The Complainant has presented evidence that the disputed domain names have been used in furtherance of fraudulent phishing schemes. Specifically, at least one of the disputed domain names has been used to redirect Internet visitors to a website that mimics the Complainant’s website and offers two Air France airplane tickets to users who complete and submit a survey. Similarly, at least one of the disputed domain names has been used redirect Internet visitors to a website purporting to be that of Ryanair, a competitor of the Complainant, offering two Ryanair airplane tickets to users who complete and submit a survey. The disputed domain names presently do not resolve or redirect to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant relates that it is a French airline passenger and freight company established on October 7, 1933. The Complainant submits it is recognized as one of the largest such companies in the world. According to the Complainant, with a fleet of 583 airplanes, the Complainant serves 231 cities in 103 countries with 1,500 flights every day. The Complainant reports it carried more than 79 million passengers in 2015, generating more than EUR26 billion through its alliance with KLM.

The Complainant states that it has traded under the AIR FRANCE name since 1933, and has registered national, European Union, and International trademarks for AIR FRANCE. The Complaint refers inter alia to its International trademark for AIR FRANCE, No. 828334, registered on October 20, 2003. The Complainant observes that its AIR FRANCE mark has been recognized as a well-known mark in a number of UDRP cases, and further maintains that AIR FRANCE is a well-known mark within the meaning of article 6bis of the Paris Convention.

The Complainant contends that the disputed domain names have been registered by the same person or otherwise by persons who are subject to common control, and requests consolidation. The Complainant observes that the disputed domain names were registered during a three-day span, and that according to WhoIs records the registrants reside in Pakistan and share the same last name (Khan). The Complainant notes that the disputed domain names were not delegated to the Registrars’ DNS servers, but instead to common servers belonging to Amazon Technologies, Inc. According to the Complainant, the disputed domain names are IDNs with non-Latin endorsed letters intended for typosquatting, and have been used in connection with phishing schemes targeting the Complainant and one of its competitors, Ryanair.

The Complainant submits that the disputed domain names are identical or confusingly similar to the Complainant’s AIR FRANCE mark. According to the Complainant, the disputed domain names each differ from the Complainant’s mark only by the replacement of one letter “a” with the non-ASCII character “ạ”. The Complainant explains that the browser application translates Punycode text into the non-ASCII characters displayed in the respective web browsers address bar as “http://www.ạirfrance.com” and “http://www.airfrạnce.com”. The Complainant maintains that such use or absence of punctuation marks does not serve to dispel the confusing similarity of the disputed domain names. The Complainant remarks that the Punycode version of an IDN is seldom used on the web because of its visual non-ergonomic complexity.

The Complainant maintains that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant avers that the Respondents are not related to the Complainant and has not been licensed or otherwise authorized to use the Complainant’s AIR FRANCE mark, and that the Respondents are not commonly known by the disputed domain names. The Complainant explains that prior to the filing of the Complainant the Respondents were using the disputed domain name <ạirfrance.com> to redirect Internet visitors to a website impersonating the Complainant’s website and offering the possibility of free Air France airplane tickets to users who completed and submit a survey. Similarly, the Complainant relates that the Respondents were using the disputed domain name <airfrạnce.com> to redirect Internet visitors to a website purporting to be that of Ryanair, a competitor of the Complainant, and offering the possibility of free Ryanair airplane tickets to users who completed and submit a survey. The Complainant submits that such use obviously cannot give rise to any rights or legitimate interests in the disputed domain names, and that the Respondents are not making a legitimate or noncommercial fair use of the disputed domain names.

The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The Complainant reiterates that the AIR FRANCE mark has a strong reputation and is widely known throughout the world. The Complainant submits that the Respondents beyond doubt were aware of the Complainant’s well-known AIR FRANCE mark when registering the disputed domain names, and that the Respondents aim was to profit from and exploit the reputation and well-known character of the Complainant’s mark by means of a fraudulent phishing campaign.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

The Complainant has requested that the multiple disputed domain names registered by the Respondents as identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

The uncontroverted facts in the instant record strongly suggest that the disputed domain names more likely than not are subject to common control. The disputed domain names were registered over a three-day span, with the Respondents electing to conceal their identities through the use of privacy services. While the disputed domain names were registered with different Registrars, the WhoIs information subsequently disclosed by each Registrar indicates that the Respondents have the same last name and reside in Pakistan. Further, despite different Registrars, the Respondents have used a common DNS server. In addition, the record before this Panel reflects – namely, a virtually identical phishing scheme targeting the Complainant by associating the disputed domain names with the Complaint AIR FRANCE mark.

Given the foregoing factors, there is a significant likelihood in the Panel’s opinion that the Complainant has been the target of common conduct by the Respondents directly affecting the Complainant’s rights – namely, the deliberate association and use of the Complainant’s AIR FRANCE mark in multiple domain names in the perpetration of a fraudulent phishing scheme. Taking into account identifiable commonalities in the registration and use of the disputed domain names, the Respondents’ common conduct directly affecting the Complainant’s rights, and noting that common questions of law and fact are predominant, the Panel concludes that consolidation would be procedurally efficient, and fair and equitable to all parties. Accordingly, the Panel will proceed to a decision on the merits.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <airfrạnce.com> [xn--airfrnce-rx0d.com] and <ạirfrance.com> [xn--irfrance-mx0d.com] are confusingly similar to the Complainant’s AIR FRANCE mark, in which the Complainant has established rights through registration and long and substantially exclusive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.² The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s AIR FRANCE mark is clearly recognizable in the disputed domain names.³ As noted earlier, previous UDRP panels have found IDNs and their Punycode translations to be equivalent.⁴ The disputed domain names are identical to the Complainant’s AIR FRANCE mark except for the replacement of a single ASCII letter “a” in each of the disputed domain names with the non-ASCII character “ạ”. The use of the non-ASCII character “ạ” in place of the ASCII letter “a” does not dispel the confusing similarity of the disputed domain names to the Complainant’s mark, and in the attendant circumstances is strongly evocative of typosquatting. Top-Level Domains (“TLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.⁵

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainant’s mark. The record reflects that the Respondents in all probability have registered and used the disputed domain names, which are confusingly similar to the Complainant’s mark, in the perpetration of a fraudulent phishing scheme.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed 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 Respondents have not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

UDRP panels have repeatedly recognized the strength and reputation of the Complainant’s AIR FRANCE marks. See, e.g., Société Air France v. Whois Privacy Corp., WIPO Case No. D2017-2143.⁶

It is evident that the Respondents were aware of the Complainant and the Complainant’s AIR FRANCE mark when registering the disputed domain names. In the absence of any explanation by the Respondents, the Panel considers in all likelihood that the Respondents registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s mark in the perpetration of a fraudulent phishing scheme.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondents, the Panel concludes that the Respondents have not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondents have been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondents’ rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondents were aware of the Complainant and had the Complainant’s well-known AIR FRANCE mark in mind when registering the disputed domain names. The record is convincing that the Respondents’ motive in relation to the registration and use of the disputed domain names was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom through a fraudulent phishing scheme. In light of the attendant circumstances, the Respondents’ registration of the disputed domain names (including typosquatting) smacks of opportunistic bad faith. The Panel further considers the Respondents’ use of privacy services evocative of a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

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 <airfrạnce.com> [xn--airfrnce-rx0d.com] and <ạirfrance.com> [xn--irfrance-mx0d.com] be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: May 8, 2018

¹ The disputed domain names are internationalized domain names (IDNs), which contain non-Latin characters. To display those characters, each component of the domain name that is not in ASCII characters is encoded by a scheme such as Punycode Previous panels have found IDNs and their Punycode translations to be equivalent. Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, WIPO Case No. D2011-0100. See FUJITSU Limited v. tete and Lianqiu Li, WIPO Case No. D2006-0885. See also Monografías.com S.A., Fernando Julián Negro v. Nick Lozikov / Moniker Privacy Services, WIPO Case No. D2008-0140. Using Punycode the browser application will translate the Punycode text into the non-ASCII characters that are then shown and used. See The Coca-Cola Company v. Keren, Chen, WIPO Case No. D2008-1852.

² See WIPO Overview 3.0, section 1.7.

³ Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

⁴ Refer to Note 1 supra. See also L’Oréal v. Anonymous Corp, Ken, WIPO Case No. D2013-0710.

⁵See WIPO Overview 3.0, section 1.11.2 and cases cited therein.

⁶ See also Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Ali Dubai, WIPO Case No. D2016-2028; Société Air France v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2015-0443; 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. Alvaro Collazo, WIPO Case No. D2003-0417; Air France v. Kitchkulture, WIPO Case No. D2002-0158; and Société Air France v. Van Wijk & Masker Holding BV, WIPO Case No. D2002-0028.