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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SociГ©tГ© Air France v. PrivacyProtect.org / Rob McGee

Case No. D2008-1917

1. The Parties

The Complainant is SociГ©tГ© Air France of Roissy CDG Cedex, France, represented by MEYER & Partenaires, France.

The Respondent is PrivacyProtect.org / Rob McGee of Washington, United States of America.

2. The Domain Names and Registrars

The disputed domain names <airfranceauctions.com>, <airfrancedash.com>, <airfranceinfo.com>, <airfranceposter.com>, <airfrancesevens.com>, <airfranceworld.com>, <airlinesairfrance.com>, <deltaairfrance.com> and <voyagesairfrance.com> are all registered with Planet Online Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to Planet Online Corp., a request for registrar verification in connection with the disputed domain names. On January 26, and January 29, 2009, Planet Online Corp., 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 January 29, 2009 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 February 4, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2009.

On February 10, 2009, the Center received an email communication from the Complainant, requesting a one-month suspension of the proceedings. The case was suspended on February 10, 2009, in order to enable the parties to discuss settlement options. On March 10, 2009, the Center received a request from the Complainant to re-institute the proceedings, at which time it was discovered that the WhoIs details for all nine of the disputed domain names had changed. The details for five of the disputed domain names (<airfranceauctions.com>, <airfrancedash.com>, <airfrancesevens.com>, <airlinesairfrance.com> and <deltaairfrance.com>) were, at that time, showing the Registrant name “Kirra Retail”, an entity apparently located in Las Vegas, United States.

The WhoIs details for the remaining four disputed domain names (<airfranceinfo.com>, <airfranceposter.com>, <airfranceworld.com> and <voyagesairfrance.com>) had changed as well, and were reflecting details similar to those of the Complainant’s authorized representative. The named Registrant was listed as “Meyer & Associates”, with an apparent contact name of “Steve Furman”. These names are substantially similar to those of the Complainant’s authorized representative, Mr. Steve Fuhrmann of the law firm Meyer & Partenaires.

Accordingly, on March 11, 2009 the Center sent email communications to both the Complainant and the Registrar, asking whether the Complainant had gained actual control over the domain names in question and seeking clarification on the nature of the transfer in light of the Registrar’s obligations under paragraph 8 of the Policy. No reply has been received from the Registrar to date, nor to the three additional reminders sent by the Center to the Registrar.

In response to the Center’s query, the Complainant’s representative confirmed by return email on March 11, 2009 that the Complainant was not, in fact, in control of the four disputed domain names which approximated the contact details for the Complainant’s authorized representative. The Complainant further confirmed that the telephone number listed in the WhoIs for these four disputed domain names was, in fact, the correct office telephone number for the Complainant’s law firm.

As of the date of writing this decision, the Panel notes that all nine of the disputed domain names are now showing the Registrant as “Meyer & Associates” with a contact name of “Steve Furman”.

Despite numerous attempts to contact the Registrar, no reply has been received to date.

The Panel notes with concern the Registrar’s behavior in this case. As has been previously noted by other UDRP panels, in order for the Policy to operate effectively it is imperative for Registrars to cooperate quickly and expeditiously in replying to UDRP service provider requests for information. In the present case, it took no less than ten email communications from the Center before any substantive reply was received in regard to the Registrant’s identity and contact details, causing a delay of more than forty days in the notification of the Complaint. Whether this amounts to an intentional obstruction of the UDRP process may be open to debate, but similar conduct has been called into question in previous UDRP cases. See, e.g., Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080.

Concurrent with the Complainant’s request to re-commence the proceedings on March 11, 2009, the Complainant confirmed that it was not in fact in control of the disputed domain names. Accordingly, the Center re-commenced the proceedings on March 30, 2009. The new due date for the filing of a Response was April 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2009.

At the time of filing the Complaint, the disputed domain names were apparently registered with a privacy service, PrivacyProtect.org. When the Registrar provided a substantive reply to the Center’s request for Registrar verification, the “underlying registrant” Rob McGee was disclosed. The Complainant opted to file an amended Complaint, adding the underlying disclosed registrant as a formal Respondent, and the Center proceeded to notify the Complaint shortly thereafter.

During the course of these proceedings, several communications have been received from “Rob McGee.” It was upon receipt of his offer to settle the matter, on February 5, 2009, that the Complainant requested a suspension of the proceedings. What relationship the intervening registrant “Kirra Retail” has to these proceedings remains unknown, as no reply or explanation has been received from the Registrar or either apparent Respondent / Registrant to date.

On April 20, 2009, in reply to the Center’s notification of Respondent default, an email was received by the Center from Rob McGee, which stated:

“If you would contact the other party mentioned that has claim to the disputed domains you will find that we have complied and they have transfered [sic] the disputed domains into their Account. You can move forward with the proceedings but in the end you will find that this is the case and you will have wasted a significant amount of time in doing so.”

What significance this statement has is unclear. Perhaps the Registrar and/or Respondent attempted to transfer the disputed domain names to the control of the Complainant during the suspension of the case. If this was the case, given the above-noted failure by the Registrar to communicate with the Center (and apparently also with the Complainant), one can only speculate as to the exact reasons for the changes made to the WhoIs data.

In any event, based on the Complainant’s email of March 11, 2009, it is clear that regardless of the current information in the Registrar’s WhoIs database, the Complainant has not obtained actual control over the disputed domain names. Accordingly, the Panel finds that it is proper to continue to a decision on the merits in this case.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 29, 2009. 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

As there has been no formal Response filed in this case, the following facts are taken from the Complaint. The Complainant operates a major national and international airline Air France. The airline traces its origins under the name SociГ©tГ© AIR FRANCE back to 1933.

The Complainant is the registered owner of a large number of trademarks comprising or incorporating the words “AIR FRANCE”, including:

AIR FRANCE, French nominative trademark No. 1,703,113 filed on October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001.

AIR FRANCE, French nominative trademark No. 99,811,269 filed on September 6, 1999 in Nice Classes 6, 8, 9, 12, 14, 16, 18-21, 24, 25, 28-39, 41 and 42, (which includes class 38 for Internet services).

AIR FRANCE, nominative trademark No. 2528461 registered in Benelux on October 7, 2003.

AIR FRANCE, nominative trademark No. 4422481 registered in Benelux on August 7, 2006.

The Complainant also owns the domain name <airfrance.com> and many generic and country code top-level domain names incorporating its trademark.

Nothing of substance is known about the Respondent except for the information attached to the registration document of the disputed domain names.

The disputed domain names <airfranceauctions.com>, <airfranceinfo.com>, <airfranceposter.com>, <airfranceworld.com>, <airlinesairfrance.com>, <deltaairfrance.com> were registered on October 4, 2008. The disputed domain names <airfrancedash.com>, <airfrancesevens.com> and <voyagesairfrance.com> were registered on October 7, 2008. Hereafter all may be referred to collectively as the “disputed domain names”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trademark AIR FRANCE is famous internationally and has been used in trade since 1933. Documentary evidence is submitted of its claim to hold the trademarks set out in section 4 above.

The Complainant contends that the disputed domain names are confusingly similar to its trademark AIR FRANCE. Each of them contains the trademark in its entirety. The lack of punctuation should be of no consequence. The other words inserted around AIR FRANCE are descriptive and do not obviate a finding of confusing similarity. Some of the added words could increase confusion, as for example, the word “poster” in the disputed domain name <airfranceposter.com> impinges on the fact that the Complainant is selling historical posters through its own website operating at “www.airfrancemuseum.org”. The word “delta” in the disputed domain name <deltaairfrance.com> may be taken as a reference to the trademark DELTA AIR LINES and may pertain to the business alliance between that airline and the Complainant. The word “dash” in the disputed domain name <airfrancedash.com> may evoke the de Havilland Dash 7 model of aircraft represented in the Complainant’s fleet. Other words incorporated, such as “sevens” and “voyages”, do not eliminate the risk of confusion with the Complainant’s trademark.

The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of disputed domain names.

The Respondent is not related in any way to the Complainant’s business and has not been licensed or authorised by the Complainant to use its trademark in any of the disputed domain names.

Use of the disputed domain names is not a bona fide offering of goods or services under the Policy, or a non-commercial or fair use under Policy, because it takes advantage of the Complainant’s trademark to confuse and divert Internet users to commercial

“pay-per-click” websites.

The Complainant contends that the passive holding of a domain name is not a bona fide offering of goods or services under Policy, or a noncommercial or fair use, and submits screenprint evidence to show that when checked, the disputed domain names <airfranceauctions.com>, <airfranceinfo.com>, <airfranceposter.com>, <airfranceworld.com>, <airlinesairfrance.com> and <deltaairfrance.com> did not have an Internet presence. They are held in order to disrupt the Complainant’s business.

The Complainant further contends that the disputed domain names have been registered and used in bad faith.

In respect of bad faith registration, the Complainant says that its name is so well-known throughout the world that registration of the disputed domain names could not have been made other than in bad faith. According to previous UDRP decisions, for example Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; “The notoriety of Complainant’s trademark is such that a prima facie presumption is raised that Respondent registered the trademark for the purpose of selling it to Complainant or to a competitor of Complainant 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 Complainant’s mark.”

In respect of use in bad faith, the Complainant contends that those disputed domain names that are in use, namely <airfrancedash.com>, <airfrancesevens.com> and <voyagesairfrance.com>, divert Internet users to a parking webpage on which several hyperlinks are displayed, directing users to competing third-party commercial websites. These links generate revenue to the benefit of the Respondents through a “pay-per-click” operation. Thus, the Respondent is making a commercial gain on the basis of the Complainant’s fame and trademark.

The Complainant submits that if the content of the links is beyond the Respondent’s immediate control, the Respondent is nevertheless responsible, citing e.g., Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417.

The Complainant says that passive holding, as referred to above, amounts to acting in bad faith, citing e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant cites numerous other previous UDRP decisions that it would like to be treated as precedent.

By way of remedy the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The word “air” on its own is a generic word. The word “France” alone is a geographic identifier and descriptive term. The two words in combination as AIR FRANCE constitute a long-standing, world-class trademark unquestionably entitled to protection. The Complainant has produced in evidence satisfactory documentation of its ownership of and rights in the trademark AIR FRANCE.

The Complainant is required to prove that each of the disputed domain names is confusingly similar to the trademark AIR FRANCE. Each contains the trademark AIR FRANCE in its entirety, and in that respect is found to be confusingly similar to the trademark, punctuation being of no consequence in the context. Each contains additional wording. In some instances the addition has some loose connection with travel, France, or both. Additional words such as “delta”, “airlines”, “voyages”, “world” and “sevens” (the last two words being possibly inspired by the Rugby World Cup Sevens, in which France competes), far from reducing confusing similarity, are likely to increase the probability of the Respondent’s domain names being found through search confusion.

The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the onus of proving that the Respondent does not have rights or legitimate interests in the disputed domain names. The Complainant asserts that it has had no business connection with the Respondent and has never in any way granted it the authority to use the Complainant’s trademark. Furthermore, the Complainant asserts that the Respondent has never been known by a name similar to the disputed domain names. The Respondent is not making a bona fide commercial use of three of the disputed domain names, or any fair or noncommercial use of them, because they are trading on the Complainant’s trademark. The other six disputed domain names are passively held.

Thus the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain names, which it is open to the Respondent to refute in the terms of paragraph 4(c) of the Policy or otherwise. The Respondent has not replied.

The Panel cannot find any evidence upon which the Respondent might establish rights or legitimate interests in any of the disputed domain names and accordingly finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.

The disputed domain names <airfrancedash.com>, <airfrancesevens.com> and <voyagesairfrance.com> resolved to websites that were essentially identical when the screenprints submitted in evidence were made. The content comprised display advertisements for miscellaneous products with invitations to “click here”. The mode of operation is easily recognisable and is common on the Internet. The operator of the website, it may reasonably be presumed, is paid a commission for the referral of customers to the destinations of the displayed advertisements. This operation is known as pay-per-click or click-through revenue generation. The operation may exist for no other reason than to collect the revenue paid for referrals, or the domain name or website may be available for sale and may have been put to use collecting revenue in the interim.

The click-through model of business is capable of being conducted entirely legitimately. Many bona fide websites such as news outlets or discussion groups collect revenue from displayed links and advertisements, which may be a secondary or the primary intention of the website. In order to be profitable, such a website has to attract visitors in the first place. If this is done by the unauthorised use of another’s famous trademark, clearly it is not legitimate.

Internet users often reach websites by selecting from the output of a search engine. It may reasonably be deduced in this case, on the balance of probabilities, that the Respondent has created the disputed domain names in order to attract viewers to its websites and in turn to collect revenue from referrals to advertisers. The scheme clearly is to attempt to attract users searching for permutations of words such as “France”, “AirFrance”, “sevens” or “voyages”.

In respect of the disputed domain names <airfrancedash.com>, <airfrancesevens.com> and <voyagesairfrance.com>, the Panel finds registration and use in bad faith proven on the grounds that the Respondent has intentionally attempted to attract Internet users for commercial gain by confusion with the Complainant’s trademark.

In respect of the six disputed domain names <airfranceauctions.com>, <airfranceinfo.com>, <airfranceposter.com>, <airfranceworld.com>, <airlinesairfrance.com> and <deltaairfrance.com>, which appear not to resolve to a website, they are nevertheless held passively. It has been generally accepted since the earliest decisions under the UDRP (notably Telstra Corporation Limited v. Nuclear Marshmallows, Supra) that a respondent cannot escape a finding of use in bad faith by holding a disputed domain name in a state of non-use, if the surrounding circumstances indicate that the domain name comprises another’s famous trademark without plausible excuse. The Panel finds in the present case that the Respondent has registered and used in bad faith the six disputed domain names above.

Furthermore, the Panel finds that the trademark AIR FRANCE is so inescapably world-famous that its incorporation into each of the nine disputed domain names without plausible explanation constitutes, in and of itself, bad faith registration and use (See Veuve Clicquot Ponsardin, Maison FondГ©e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).

The Panel finds for the Complainant under paragraph 4(b)(iv) and thereby under paragraph 4(a)(iii) of the Policy.

In deciding the remedy in respect of the disputed domain name <deltaairfrance.com>, the Panel is in some dilemma because, in the Complainant’s own words, in part the domain name “refers to the famous trademark DELTA AIR LINES. The Panel would not normally award to one company a domain name containing the famous trademark of another company, and the solution would be to order cancellation of the domain name. In the present instance the Panel considers it practical to transfer <deltaairfrance.com> to the Complainant because:

(a) cancellation might result eventually in the disputed domain name being recycled back on to the market;

(b) the Complainant says that it and Delta Airlines signed a joined-venture agreement in 2007; and

(c) the joint-venture partners can reasonably be relied upon to agree what to do with <deltaairfrance.com>.

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 names <airfranceauctions.com>, <airfrancedash.com>, <airfranceinfo.com>, <airfranceposter.com>, <airfrancesevens.com>, <airfranceworld.com>, <airlinesairfrance.com>, <deltaairfrance.com> and <voyagesairfrance.com> be transferred to the Complainant.

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Dr. Clive N.A. Trotman
Sole Panelist

Dated: May 14, 2009