WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Air France v. Nit Khummawa Case No. D2009-1166 1. The Parties
Complainant is Société Air France, Paris, France, represented by Meyer & Partenaires, France.
Respondent is Nit Khummawa, Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2009. On September 2, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 4, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that 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” 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 September 8, 2009. The administrative proceeding was suspended from September 17, 2009 to October 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 27, 2009.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 9, 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
Complainant Société Air France is one of the world's major airlines, tracing its origins to 1933. Complainant operates its international web portal using the website “”. In addition to , Complainant has registered at least the following generic and country code top-level domains consisting of or incorporating the trademark AIR FRANCE:
;
;
;
;
;
; and
.
Complainant is the registered owner of trademarks in France, the United States and also in Thailand where the Respondent is known to be established. These trademarks include:
AIR FRANCE, Community nominative trademark no. 002528461 of January 9, 2002 for classes 6,8,9, 12, 14, 16, 18, 19, 20, 21, 24, 25, 28-39, and 41-45 of the 1957 Nice Agreement;
AIR FRANCE, American nominative trademark no. 3274207 of August 07, 2007 for classes 16, 35, and 38; and
AIR FRANCE, Thai nominative trademark no. Bor23296 of July 23, 2003 in class 38 for Internet services.
Respondent registered the disputed domain name on March 3, 2009 and is its administrative, technical and billing contact for the disputed domain name. 5. Parties Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to Complainant's trademark AIR FRANCE, as this trademark is reproduced in its entirety in the disputed domain name. Complainant's AIR FRANCE trademark is not only registered and used in commerce in a great majority of countries in the world, but is widely known throughout the world and has been recognized as a well-known mark by UDRP administrative panels.
The combination of the trademark AIR FRANCE with the wording “tickets” in the disputed domain name does not eliminate the risk of confusion with the Complainant's famous trademark AIR FRANCE, which is the only distinctive element of the disputed domain name. The mere addition of a generic or descriptive term to an otherwise distinctive or well known trademark does not serve to distinguish the domain name from Complainant's trademark. The disputed domain name also combines Complainant's famous AIR FRANCE trademark with the prefix tickets which literally refers to Complainant's main activity, and increases the risk of confusion with respect to Complainant's trademark.
Complainant alleges that Respondent has no rights or legitimate interests in because Respondent is not related to Complainant's business, is not one of its agents, does not carry out any activities for it, and does not conduct any business with it. Complainant also alleges that Respondent is not known and has never been known as either AIR FRANCE or AIR FRANCE TICKETS or any combination of these words. Complainant has not licensed or authorized Respondent to apply for, register or use . Rather, Respondent has registered in order to generate revenues through a direct diversion of Complainant's customers and thus take advantage of Air France's reputation.
Complainant further alleges that Respondent's registration of was made in bad faith because, given the international reputation of Complainant and its AIR FRANCE trademark, Respondent knew of the potential for confusing similarity between the AIR FRANCE mark and , and intended to disrupt Complainant's business. Respondent's operation of the disputed domain name constitutes bad faith use to the extent Respondent deliberately used the disputed domain name for commercial gain to divert Internet users, including Complainant's customers. In particular, the website to which the disputed domain name resolves displays a message to Internet users to “Fly Emirates,” which is one of Complainant's direct competitors. The website also contains and provides links to “pay per click” advertising from which Respondent is receiving a material benefit. Finally, as further evidence of bad faith, Complainant claims that Respondent has registered domain names incorporating the trademarks of other third parties, thus evidencing a pattern of bad faith conduct. B. Respondent
Respondent did not reply to Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. 6. Discussion and Findings
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in the disputed domain name; and (iii) that Respondent's disputed domain name has been registered and is being used in bad faith. See Policy, paragraph 4(a). A. Identical or Confusingly Similar
Complainant has established widespread use and prior registration rights in its AIR FRANCE trademark, which is incorporated in its entirety into the disputed domain name. As established in Société AIR FRANCE v. Ted Chen,WIPO Case No. D2007-0528, “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 term “tickets” to the disputed domain name does not preclude a finding of confusing similarity to 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. Accordingly, the Panel finds that 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 Respondent may establish rights or legitimate interests in the disputed domain name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent is not an agent of or otherwise related to Complainant's business, that Respondent has not been licensed to use Complainant's trademark, that Respondent has not been commonly known by the disputed domain name, and that Respondent has not made any use of the disputed domain name for either a bona fide offering of goods and services or some other noncommercial or fair use under paragraph 4(c) of the Policy. Rather, according to the exhibits submitted with the Complaint, and as argued by Complainant, Respondent registered the disputed domain name to divert Internet users to an airline that competes with Complainant (i.e., Emirates), for what appears to be commercial gain. Complainant thus contends that, under paragraph 4(a)(ii) of the Policy, Respondent has no rights to or legitimate interests in the disputed domain name. In the Panel's opinion, Complainant has established a prima facie case with respect to paragraph 4(a)(ii) of the Policy and thereby shifted the burden of production to Respondent to show that it has a particular right or legitimate interest in the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
In this case, Respondent has not asserted any rights to or legitimate interests in the disputed domain name and has presented no evidence in opposition to the Complainant's assertions in this regard. In the absence of such evidence, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Complainant, pursuant to paragraph 4(a)(ii) of the Policy has shown the second element of its claim. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the domain name by 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 provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 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. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
The Panel finds that Respondent likely had knowledge of the well-known AIR FRANCE trademark when he registered the disputed domain name, particularly given that Respondent associated this domain name with a website for the competing airline Emirates. Further, it is evident that Respondent's registration of the disputed domain names was made with the intention of targeting the fame of Complainant's well known trademark for revenue generating purposes arising from the “pay per click” websites. Respondent's registration of a domain name directly reflecting Complainant's trademark, particularly one of such fame, and then using it to attract Internet users to its website and divert users to other websites for business services similar to those of Complainant while deriving such commercial value from Complainants' mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. See Am. Online, Inc. v. Tencent Comm. Corp., NAF Case No. FA 93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101.
As an operator of a website that links to an airline that competes directly with Complainant, Respondent is in effect competing with Complainant. Thus, in this Panel's view Respondent's registration and use of the disputed domain name thus amounts to disruption of the business of a competitor and thus to bad faith registration and use of the disputed domain name as set forth under paragraph 4(b)(iii) of the Policy.
Although Respondent's registration of domain names incorporating the trademarks of several third parties, including the domain names , , and , does not alone establish a pattern of bad faith registration and use, it certainly raises sufficient questions regarding Respondent's intent with respect to the disputed domain name. A “pattern of conduct” as required in paragraph 4(b)(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant. See Smoky Mountain Knife Works v. Deon Carpenter, eResolution, Case Nos. AF-230ab; Gruner + Jahr Printing & Publishing Co., G + J McCall's LLC, Rosie O'Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby,WIPO Case No. D2000-1741. While this case does not fit neatly into those contours, the Panel finds that the trademark AIR FRANCE “is so inescapably world-famous” that its incorporation into the disputed domain name without plausible explanation constitutes, in and of itself, bad faith registration and use. Société Air France v. PrivacyP / Rob McGee,WIPO Case No. D2008-1917, citing Veuve Clicquot Ponsardin, Maison Fondée 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). 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 disputed domain name be transferred to Complainant.
Andrew J. Park
Sole Panelist
Dated: November 23, 2009
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