WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Air France v. Nadine Schwab Case No. D2008-1220 1. The Parties
The Complainant is Société Air France, Roissy, France (the “Complainant”), represented by Meyer & Partenaires, France.
The Respondent is Nadine Schwab, Hamburg, Germany (the “Respondent”). 2. The Domain Names and Registrar
The eight disputed domain names (the “Domain Names”) are
and
Each of the Domain Names is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.Com (“the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2008. On August 12, 2008, the Center transmitted to the Registrar by email a request for registrar verification in connection with the eight Domain Names. On August 13, 2008, the Registrar 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2008.
The Center appointed Dana Haviland as the sole panelist in this matter on September 24, 2008. 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 the owner of various national and international registered trademarks for the mark AIR FRANCE predating the registration of the Domain Names.
The eight Domain names were all registered by Respondent on June 27, 2008. At the time of registration, the Domain Names resolved to a pornographic website. The Domain Names are not currently in use. 5. Parties' Contentions A. Complainant
The Complainant states that it is one of the world's major airline companies, tracing its origins back to 1933. The Complainant operates an international web portal at “”. It has also registered several generic and country code top-level domain names consisting of or incorporating the trademark AIR FRANCE, including , , , , and . Identical or Confusingly Similar
According to the Complaint, Société Air France is the trade name of the Complainant, used in commerce since 1933. The Complainant is the registered owner of a large number of trademarks consisting of or including the wording “Air France” in a great majority of countries in the world, including, for example, the following:
AIR FRANCE, French trademark, Registration No. 1, 703, 113 of October 31, 1991 for all classes of 1957 Nice Agreement, renewed on September 27, 2001;
AIR FRANCE, European Community trademark, Registration No. 4422481, filed on May 4, 2005 and registered on August 7, 2006; and
AIR FRANCE, European Community trademark, Registration No. 2528461, filed on January 9, 2002 and registered on October 7, 2003.
The Complainant contends that its trademark AIR FRANCE is widely known throughout the world and has been recognized as a well-known mark by courts and UDRP administrative panels.
The Complainant contends that each of the Domain Names is confusingly similar to its trademark AIR FRANCE, in that its trademark AIR FRANCE is entirely reproduced in each of the Domain Names, in combination with nothing more than various generic or descriptive terms. The Complainant argues that its AIR FRANCE trademark is the only distinctive element of the Domain Names, and that the mere addition of a generic or descriptive term does not eliminate the risk of confusion with the Complainant's well-known trademark. Rights or Legitimate Interest
The Complainant contends that Respondent has no rights or legitimate interest in the Domain Names. According to the Complaint, the Respondent is not an agent or in any other way related to the Complainant's business, and the Complainant has not granted the Respondent any license or authorization to make any use of its trademark or to register the Domain Names.
The Complainant asserts that the Domain Names have never been used for a bona fide offering of goods and services nor for any non-commercial or fair use. According to the Complaint, the Domain Names initially resolved to a pornographic website at the time of their registration, in order to generate revenues by taking advantage of the renown of the Complainant's AIR FRANCE mark. The Domain Names are not currently in use. Registration and Use in Bad Faith
The Complainant contends that the Respondent has registered and is using the Domain Names in bad faith. According to the Complaint, in view of the Complainant's well-known trademark, and the Respondent's registration of numerous Domain Names incorporating that mark, some including terms referring to air travel, the Respondent must have been aware of the Complainant's mark and have intended in bad faith to take advantage of it for commercial gain. The Complainant asserts that the Respondent's use of the Domain Names for commercial gain through a pornographic website constituted bad faith use, and that under the circumstances, its current passive use of the Domain Names is also in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Complainant has established widespread use and prior registration rights in its AIR FRANCE trademark, which is incorporated in its entirety into each of the eight Domain Names. As stated in Société AIR FRANCE v. Ted Chen,WIPO Case No. D2007-0528, “The Complainant's AIR FRANCE mark is well known. The addition of a descriptive word to this mark, as is found in each of the disputed domain names, fails to distinguish the domain names from the mark.”
Thus, in this case, the addition of the descriptive terms “crew”, “net”, “pilot”, “virtual”, “go”, “on”, and “vip” to the respective Domain Names does not preclude a finding of confusing similarity to the Complainant's trademark. See F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956; Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413; Nikon Inc. and Nikon Corporation v. Photocom Korea,WIPO Case No. D2000-1338. Moreover, some of the descriptive words related to air travel, like “crew” and “pilot”, not only fail to distinguish the Domain Names in question from the mark, but also reinforce the association of those Domain Names with the Complainant's mark. Société AIR FRANCE v. Ted Chen, supra; Société AIR FRANCE v. Spiral Matrix, WIPO Case No. D2005-1337.
The Panel finds that the Complainant has satisfied the first element of its claim under Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, respondent used, or made 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or
(iii) 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 Complainant asserts that the Respondent is not an agent nor otherwise related to the Complainant's business, that the Respondent has not been licensed to use the Complainant's trademark, that the Respondent has not been commonly known by the Domain Names, and that the Respondent has not made any use of the Domain Names for either a bona fide offering of goods and services or some other noncommercial or fair use under paragraph 4(c) of the Policy. On the contrary, the Complainant has shown that the Respondent initially utilized the Domain Names to misleadingly divert Internet users to a pornographic website for commercial gain, and that the Domain Names are not currently being used at all. The Complainant contends that the Respondent therefore has no rights to or legitimate interests in the Domain Names, as required by paragraph 4(a)(ii) of the Policy. The Complainant has made out a prima facie case with respect to paragraph 4(a)(ii) and shifted the burden of production to the Respondent to show that it has a particular right or legitimate interest in the Domain Names under paragraphs 4(a)(ii) and 4(c).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Worldwide Franchise Systems, Inc., Sheraton International, Inc., v. KerryWeb Enterprise, Inc., North West Enterprise, Inc. Kerryweb, Steve Kerry, WIPO Case No. D2007-1150; CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent”. Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416.
Respondent has not asserted any right or legitimate interests in the Domain Names in this case and has presented no evidence in opposition to the Complainant's assertions in this regard. The use of the Domain Names for a pornographic website is clearly for commercial gain, not a noncommercial or fair use. See Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 (“Respondent's use of the domain name to divert initially to a pornographic website does not amount to a legitimate interest in the domain name”). Under the circumstances, where the Respondent has registered numerous domain names incorporating the Complainant's widely known trademark for use in connection with a pornographic website for commercial purposes, the current failure to use the Domain Names for such purpose does not legitimize their prior illegitimate use nor give rise to any inference of any present or future rights or legitimate interests of the Respondent in the Domain Names. See also Société AIR FRANCE v. Angelika Freitag,WIPO Case No. D2008-1219 (registration of numerous domain names incorporating the AIR FRANCE trademark on the same date as the Domain Names herein and resolving to a similar or identical pornographic website).
The Panel finds that the Respondent has no rights or legitimate interests in respect of any of the eight Domain Names, and that Complainant has thus shown the second element of its claim, pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.
The Panel finds that the Respondent has registered and used each of the eight Domain Names in bad faith under Paragraph 4(b)(iv) of the Policy, as the evidence shows that the Respondent registered the Domain Names and used them to attract Internet users to the Respondent's pornographic website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark. See Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022 (diversion of domain names incorporating Holiday Inn trademark to a pornographic site was consistent with a finding of bad faith registration and use). Under the circumstances, as noted above with respect to the Respondent's lack of legitimate interests in the numerous Domain Names, the Respondent's subsequent cessation of this bad faith use does not negate a finding of bad faith registration and use of the Domain Names by Respondent under Paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has thus satisfied the third element of its claim pursuant to Paragraph 4(a)(iii) of the Policy. 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.
Dana Haviland
Sole Panelist
Dated: October 8, 2008
Full & Egal Universal Law Academy