The Complainant is Société Air France, Roissy, France, represented by Meyer & Partenaires, France.
The Respondent is Jose Maria Conte, Mar del Plata, Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name <airfranceairfrance.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2007. On August 2, 2007, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On August 6, 2007, Directi Internet Solutions d/b/a PublicDomainRegistry.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 satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2007.
The Center appointed Luca Barbero as the sole panelist in this matter on October 5, 2007. 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 one of the world’s major airline companies, tracing its origins back to 1933 and Société Air France is the trade name of the Complainant, used in commerce since 1933.
The Complainant is the owner of several trademarks registration consisting in the sign AIR FRANCE such as the French trademark No 1703113 of October 31, 1991, the French trademark No 99811269 of September 6, 1999, the United States of America registration No. 0610072 of August 2, 1955 and the Argentinean trademark TM No. 1999046 of November 18, 2004.
The Complainant operates an international web portal at “www.airfrance.com” and has registered several generic and country code top-level domain names consisting of or incorporating the trademark AIR FRANCE”.
The Respondent registered the domain name <airfranceairfrance.com> on February 13, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant informs the Panel that web searches about the Respondent have been carried out and that the website at “www.jmconte.com” is not active. The Complainant did not find any other relevant information about the Respondent
The Complainant states that the trademark AIR FRANCE is well and widely known throughout the world and easily recognizable as such and that several courts of justice and administrative panels have already recognized the well-known character of the trademark AIR FRANCE.
The Complainant contends that disputed domain name <airfranceairfrance.com> is confusingly similar to trademarks in which the Complainant has rights as the trademark AIR FRANCE is twice entirely reproduced.
The Complainant states that the repetition of the trademark AIRFRANCE in the disputed domain does not eliminate the risk of confusion with the Complainant’s famous trademark AIR FRANCE.
According to the Complainant, this combination cannot refers to anything else than the French airline company.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondentis not related in any way to the Complainant’s business, is not one of its agents and does not carry out any activity for, or has any business with it.
The Complainant states that the Respondent is not currently and has never been known under the wording “air france” nor “airfrance airfrance”.
The Complainant informs the Panel that no licence or authorization has been granted to the Respondent to make any use, nor apply for registration of the domain name <airfranceairfrance.com>.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the contested domain name has been registered by the Respondent in order to take advantage of the Complainant’s well-known trademark to confuse and divert Internet users to competing websites in the field of tourism and travel through a “pay per click” domain parking solution.
According to the Complainant, such use is not a bona fide offering of goods or services under Policy 4(c)(i), or a non-commercial or fair use under Policy 4 (c)(iii).
With reference to the circumstances evidencing bad faith registration, the Complainant states that it is difficult to imagine that the Respondent could have ignored the well-known trademark AIR FRANCE at the time of the registration of the confusingly similar domain name <airfranceairfrance.com>.
The Complainant emphasizes that the strong reputation and the widely known character of its trademark AIR FRANCE has been previously demonstrated throughout the world.
The Complainant alleges that the Respondent has registered the disputed domain name precisely because of the well-known character of the trademark AIR FRANCE since the trademark AIRFRANCE is twice reproduced in the disputed domain name and in view of the fact that every hyperlinks displayed under the disputed domain concern the field of tourism and travel.
The Complainant contends that the Respondent has registered the contested domain name for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and divert Internet users to other websites in the field of tourism and travel through hyperlinks.
The Complainant furthermore points out that tourism creates an important traffic on the Internet and that the Respondent expected to take financial advantage of this paying business.
As a circumstance evidencing bad faith in the use of the domain name, the Complainant highlights that the disputed domain name diverts Internet users to a parking webpage in French (Air France is the French national airline company) on which several hyperlinks are displayed consisting for all of them of results in the field of tourism and travel.
The Complainant indicates that, by clicking on these hyperlinks, users are directed to other results in the field of tourism and online travel ticketing and competing French third-party commercial websites.
The Complainant underlines that these hyperlinks generate revenue to the benefit of the Respondent through a “pay per click” domain parking solution and that, it is obvious that the Respondent is intending to realize material benefits by diluting the fame and renown of the Complainant’s trademark.
In view of the Complainant, the Respondent has a responsibility for the use of the domain name even if such use occurs on a parking page.
The Complainant contends that the Respondent is obviously not making any legitimate non-commercial or fair use of the disputed domain name because such use could mislead consumers by offering competing services, without having acquired any licence or permission from the Complainant, which is the legitimate owner of the trademark AIR FRANCE.
The Complainant underlines that this use of the contested domain name has to be considered as unfair competition and that the Respondent is undoubtedly not making any good faith use of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant.
It is well established in prior decisions that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words” (Wal-Mart Stores, Inc. v. Henry Chan,
WIPO Case No. D2004-0056 : “chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); “ Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337; Société Air France v. Domain Active Pty Ltd., WIPO Case No. D2004-0993; Société Air France v. Michal/EXLET, Tomek/EXLET,WIPO Case No. D2007-0295 : “flights”, “reservations”, “travel” added to AIR FRANCE mark).
In the case at hand, the contested domain name wholly incorporates the Complainant’s trademark twice. Accordingly, it is confusingly similar to a mark in which Complainant has rights (The Coca-Cola Company v. Masud OsmanWIPO Case No. D2001-0618; Advanced Micro Devices, Inc. v. Piere Macena,
WIPO Case No. D2005-0652).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the domain name.
The Panel notes that the domain name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay per click website aimed only at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed domain name merely to direct visitors to various third party commercial websites does not constitute a legitimate, non-commercial use of the Domain Name under the Policy as held in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
See also, e.g., Bayerische Motoren Werke AG v. (This Domain For Sale) Jonathan Investments, Inc.,
WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the disputed domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept.,
WIPO Case No. D2003-0827, the Panel stated that “… although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The domain name <bilfinger.com> is only used as a link to a generic directory. . . there is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Also on this point is the Panel’s statement, inter alia in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of the well-known character of the Complainant’s trademark and the Complainant’s numerous trademark registrations, the Respondent was certainly aware of the Complainant’s trademarks.
As stated in previous decisions, the Complainant’s trademark is a widely known trademark amongst others Société Air France v. Eastern-Aerospace, WIPO Case D2003-0138; Société AIR FRANCE v. Ted Chen, WIPO Case D2007-0528; Société Air France v. FP Transitions Pty Ltd,
WIPO Case No. D2007-0988; Société Air France v. Michal/EXLET, Tomek/EXLET,
WIPO Case No. D2007-0295).
The Panel shares the view of a number of other Panelist findings “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith” (See also Veuve Cliquot Ponsardin,Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,
WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn,
WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103).
Furthermore, the Panel observes that the contested domain name points to a parking page with a number of links related to tourism and travel which is corresponding to the activity of the Complainant, additional element confirming that the Respondent was well-aware of the Complainant’s trademarks.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226).
The Panel finds that Internet users, in light of the contents of the web page linked to the domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see i.a Manheim Auctions Inc. v. Whois ID Theft Protection,
WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,
WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <airfranceairfrance.com> be transferred to the Complainant.
Luca Barbero Sole Panelist
Dated: October 19, 2007
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