WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� Air France v. Domain Park Limited
Case No. D2007-0818
1. The Parties
The Complainant is Soci�t� Air France, Roissy CDG, France, represented by Meyer & Partenaires, France.
The Respondent is Domain Park Limited, Apia, West Samoa, Samoa.
2. The Domain Names and Registrar
The disputed domain names and are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2007. On June 6, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On June 7, 2007, Moniker Online Services, LLC 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 June 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2007.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on July 24, 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. It is established under the laws of France and operates internationally. Its airline code is “AF”. The Complainant operates a web portal under the URL .
KLM Royal Dutch Airlines also is one of the world’s major airlines companies, based in The Netherlands and operating internationally. KLM Royal Dutch Airlines operates a web portal under the URL . This company is not a party to these proceedings.
The Complainant is the owner of several trademarks, including notably the following:
- French trademark AF, no. 02 3 163 152, filed on May 6, 2002 in international classes 4, 8, 14, 16, 18, 20, 21, 24, 25, 26, 28, 34, 35, 38 and 39.
- Community trademark AF, no. 002914372, filed on October 31, 2002 in international classes 4, 8, 14, 16, 18, 20, 21, 24, 25, 26, 28, 34, 35, 38 and 39.
- International trademark AF, no. 801897, registered on December 30, 2002 (based on French trademark no. 02 3 163 152) in international classes 4, 8, 14, 16, 18, 20, 21, 24, 25, 26, 28, 34, 35, 38 and 39.
- French trademark AIR FRANCE, no. 1 703 113, filed on October 31, 1991 in international classes 1 to 42
- French trademark AIR FRANCE, no. 99 811 269, filed on September 6, 1999 in international classes 3 to 6, 8, 9, 11, 12, 14, 16, 18 to 21, 24 to 39, 41 and 42.
- US trademark AIR FRANCE, no. 610,072, registered on August 2, 1955 in international class 39.
Community trademark KLM + DEVICE, no. 000500454, filed on April 1, 1997, in international classes 35, 36, 38, 39 and 42, is owned by the Dutch company Koninklijke Luchtvaart Maatschappij N. V..
The Respondent registered the domain name on December 2, 2006 and on February 4, 2007. These domain names resolve to websites containing links to third parties’ commercial websites, including websites operated by competitors of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant first alleges that it is one of the founding fathers of the “Skyteam Alliance”, an alliance created in 2000 and featuring nine major international airlines, including KLM. It also contends that the Complainant and KLM had the project to create a new leading European airline group, through a share exchange between the two airlines. According to the Complainant, this merger was officially announced on September 29, 2003.
The Complainant alleges that KLM has not joined in the proceedings, but has been informed about the dispute by the Complainant and has agreed with the filing of the Complainant. However, no evidence has been produced in support of this allegation.
Concerning the first test under the Policy, the Complainant submits the following:
- . According to the Complainant, this domain name is confusingly similar to the Complainant’s AF trademark. Indeed, it wholly incorporates such trademark. In addition, it is a mere combination of two famous trademarks, AF and KLM, with the addition of the word “cargo”, which is descriptive of one of the Complainant’s activities. The Complainant refers to several prior UDRP decisions, including one concerning the domain name , where the panel found that the domain name was confusingly similar to the Complainant’s trademark.
- . According to the Complainant, this domain name is confusingly similar to the Complainant’s AIR FRANCE trademark. Indeed, it wholly incorporates such trademark and the addition of the letter “gp” does not eliminate the risk of confusion.
Concerning the second test under the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant states that the Respondent is not related in any way to the Complainant’s (or KLM’s) business, is not currently and has never been known under the domain names, and has not received any license or authorization from the Complainant to use the domain names. According to the Complainant, the Respondent is using the domain names to take advantage of the Complainant’s well-known trademarks to confuse and divert Internet users to competing websites through a “pay-per-click” domain parking solution. Finally, the Complainant states that the Respondent has not engaged in any action that shows he has rights or legitimate interests in the disputed domain names.
Concerning the third test under the Policy, the Complainant contends that the Respondent has registered and is using the domain names in bad faith. First, the Complainant submits that it is difficult to imagine that the Respondent could have ignored the well-known trademarks AF or AIR FRANCE at the time he registered the domain names. In addition, according to the Complainant, the combination of the two famous trademarks AF and KLM, together with the word “cargo”, could not have been made randomly and, therefore, ascertains the Respondent’s knowledge of the Complainant’s trademark. The Complainant further contends that the Respondent registered the domain names for the only purpose of generating commercial gain by creating and taking advantage of confusion, diverting Internet user to third parties’ websites. Concerning use in bad faith, the Complainant suggests that the respondent is using the domain names to generate revenue through a “pay-per-click” domain parking solution.
On this basis, the Complainant requests the transfer of the domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of several “AF” trademarks, as well as several “AIR FRANCE” trademarks.
Concerning the second issue, the Panel finds the following:
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As mentioned by the Complainant, the domain name wholly incorporates the Complainant’s “AF” trademark. However, this trademark only makes two out of the ten letters of the domain name (excluding the top level domain). In general, a trademark consisting in a few letters (in the present case, two letters), may not be used to prevent third parties from using the same few letters in different names, where there is no likelihood of confusion. The question therefore arises whether the addition of “klmcargo” to the letters “af” is sufficient to distinguish the domain name and avoid likelihood of confusion.
In the Panel’s view, and taking into account the particular circumstances of the case, the domain name is confusingly similar to the Complainant’s AF trademark. First, the domain name is a combination of two well-known trademarks, AF and KLM, with the addition of a common term (“cargo”) which is descriptive of certain of the services provided by the Complainant. As decided in prior UDRP decisions, the combination of two famous trademarks does not prevent a finding a confusing similarity under the Policy (see, e.g, ,Audi AG v. Hans Wolf, WIPO Case No. D2001-0148). Second, the specific combination of the Complainant’s trademark with the letters “klm”, which correspond to the name (and registered trademark) of an airline with which the Complainant has entered into a highly publicized business relationship, has, in the Panel’s view, the effect of increasing the likelihood of confusion in the present case (see also, Soci�t� Air France v. Ali Ferhat Kurtulus, Levent Mert/Erdem Yavuz, WIPO Case No. D2004-0759, where the domain name was deemed confusingly similar to the Complainant’s AF trademark).
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This domain name wholly incorporates the Complainant’s AIR FRANCE trademark. The addition of the “gp” prefix, which is separated from the AIR FRANCE trademark, is not sufficient to distinguish the domain name from the Complaint’s trademark (see, Aoci�t� Air France v. Richard J., WIPO Case No. D2005-0821, where the domain name was deemed confusingly similar to the trademark AIR FRANCE).
Therefore, the Panel finds that the domain names are confusingly similar to trademarks in which the Complainant has rights. This finding, and indeed this entire decision, is without prejudice to any rights that may be asserted by KLM Royal Dutch Airlines in the mark KLM.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
In the present case, the Respondent failed to file a Response. There is therefore no indication from the Respondent as to his rights and/or legitimate interests in the domain name.
Based on the information and documents on record, the Panel finds as follows:
- There no evidence on record that the Respondent has, at any time, used or made preparations to use the domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent is using the domain names to propose links to websites offering goods and services competing with those of the Complainant.
- There is no evidence that the Respondent, Domain Park Limited, was at any time commonly known by either of the domain names.
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names. On the contrary, the evidence suggests that the Respondent is making a commercial use of the domain name, through a pay per click domain parking solution.
The Panel therefore finds that that the Respondent does not have rights or legitimate interests in either of the domain names.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295):
“(i) circumstances indicating that you [Respondent] 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
(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 web site 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 web site or location or of a product or service on your web site or location.”
The Complainant has produced evidence demonstrating that it is a well-known airline, based in France but active throughout the world. It has also produced evidence showing that it has entered into a close business relationship with KLM, also a well-known airline. According to the documents on record, the Respondent does not conduct any legitimate business activity using the disputed domain names. Given the Complainant’s and its partner’s numerous trademark registrations for the words AF, AIR FRANCE and KLM, as well as their strong, and widely publicized, commercial relationship, it is not possible to conceive of a circumstance in which the Respondent could legitimately have registered the domain names without the Complainant’s consent (see, Soci�t� Air France v. Ali Ferhat Kurtulus, Levent Mert/Erdem Yavuz, WIPO Case No. D2004-0759).
In addition, the Complainant has produced documents showing that the domain names each resolve to a webpage featuring commercial links, including links to websites offering travel services competing with the Complainant’s services. The panel agrees with numerous prior panels that have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes bad faith under the Policy (see, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537). The Panel also finds, based on the evidence on record, that the Respondent has registered and used the domain name to intentionally attract, for commercial gain through pay per click domain name parking pages, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of such web site or location.
For these reasons, the panel considers that the domain was registered and 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 names, and be transferred to the Complainant. This order is without prejudice to any rights that may be asserted by KLM Royal Dutch Airlines in the mark KLM.
Fabrizio La Spada
Sole Panelist
Dated: August 15, 2007
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