The Complainant is Société Air France of Paris, France represented by Meyer & Partenaires, France.
The Respondents are Casa Del Turismo and Travel Del Sol (hereinafter referred to collectively as “the Respondent”) of Cali, Valle, Colombia and El Paso, Texas, United States of America, respectively. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 27, 2011. On April 28, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On April 29, 2011, GoD, Inc. 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 May 2, 2011 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 May 3, 2011. The Complainant filed a request to suspend the proceedings on May 4, 2011. The proceedings were suspended on May 5, 2011 until June 5, 2011. The Complainant requested to re-institute and commence the proceedings on June 3, 2011. The Center re-instituted the proceedings on June 6, 2011.
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 June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s of its default on June 28, 2011.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 6, 2011. 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, a French Company, operates one of the largest airline services in the world. Its well known trademark, AIR FRANCE, is registered with numerous authorities, including the Institut National de la Propriété Industrielle (“INPI”) (Registration No. 414038; issued March 21, 1975), Office of Harmonization for the Internal Market (“OHIM”) (Registration No. 002528461; issued January 9, 2002) and the United States Patent and Trademark Office (“USPTO”) (Registration No. 0610072; issued August 2, 1955).
The Respondent is the registered owner of the disputed domain names, , and . The dates of registration are July 3, 2010 for the first domain name, and August 29, 2010 for the latter two domain names. The disputed domain names host websites that provide links to third party websites, some of which are operated by direct competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant, Société Air France, was formed in 1933 and is the French flag air carrier. As of 2004, it was the largest European airline with a 25.5% market share. The Complainant provided services to 43.3 million passengers and earned Euro 12.53 Billion from April 2001 to March 2002.
The Complainant has registered its AIR FRANCE trademark in multiple jurisdictions around the world, including with the appropriate French, European Union and United States of America authorities. The Complainant has also registered many domain names that incorporate its mark, including .
The disputed domain names are confusingly similar to the Complainant’s AIR FRANCE mark. Each of them incorporates the mark in full, combined with descriptive terms in either Spanish (i.e., “promociones” and “reservas”) or English (“holiday reservations”). These additional terms do not reduce the risk of confusion between the domain names and the Complainant’s famous mark; in fact they increase the likelihood of that confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is in no way related to the Complainant, and does not serve as the Complainant’s agent. Moreover, the Complainant has granted the Respondent no authorization or license to use the Complainant’s mark in any domain name.
The Respondent has not been commonly known as any of the disputed domain names. Also, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are instead being used by the Respondent to divert Internet users to a website that features pay-per-click links to third party websites, some of which are owned and operated by direct competitors of the Complainant. Such use also fails to constitute legitimate noncommercial or fair use of the disputed domain names.
The Respondent registered and is using the disputed domain names in bad faith. The Respondent must have been aware of the Complainant’s famous mark when the disputed domain names were registered. Ergo, the Respondent must have registered the domain names to derive some sort of commercial benefit through confusion with that mark.
By using the disputed domain names to furnish links to services that compete with those offered by the Complainant, the Respondent is making bad faith use those domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Panel notes that on May 2, 2011, the Respondent submitted an informal e-mail stating that: “As a travel agency, thought we had a right to use the Air France Holidaysreservations since we do make reservations for them. If this is a violation of your rule we will give this domain name to the complainant.” 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Complainant may succeed in these proceedings and gain transfer of the disputed domain names, , and , provided that the Complainant proves to the Panel’s satisfaction that:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has presented the Panel with sufficient evidence (Annexes E1 – E3) of registration of the Complainant’s well known mark, AIR FRANCE, with several jurisdictional authorities, including the INPI, OHIM and USPTO, for the Panel to conclude that the Complainant possesses the requisite rights in that mark. That conclusion has also been reached by several prior UDRP panels. See, for example, Société Air France v. Spiral Matrix,WIPO Case No. D2005-1337; Société Air France v. Alvaro Collazo, WIPO Case No. D2004-0446; and Air France v. Kitchkulture,WIPO Case No. D2002-0158.
All the disputed domain names, , and , incorporate the Complainant’s AIR FRANCE mark in full. In each case, either common Spanish language terms (i.e., “promociones” or “reservas”) or English language terms (i.e., “holidays reservations”) have been added to the mark to fill out the name. Numerous prior UDRP decisions have held that the mere addition of generic or common terms to an established trademark or service mark do not serve to distinguish the domain names from the mark. In this case, the Panel believes that the additional common terms actually add to the confusion because those terms are readily applicable to the Complainant’s business relative to that mark. As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s mark. For supporting cases see, Société Air France v. Pawan S. Jain, Airtickets India (P) Ltd.,WIPO Case No. D2008-0853 (finding to be confusingly similar to the AIR FRANCE mark); Société Air France v. Ahmetovnuri, Ahmet Nuri,WIPO Case No. D2006-1527 (finding to be confusingly similar to the AIR FRANCE mark, while stating: “The use of the generic term ‘reservation’ is rather [more] suitable to reinforce the association of the Domain Name with the Complainant’s trademark than to create a distinction.”); and American Express Company v. MustN, NAF Claim No. FA257901 (finding to be confusingly similar to the AMEX mark.).
In the Panel’s opinion, the Complainant has proved that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not related in any way to the Complainant’s business, and that the Respondent has not been authorized, licensed or otherwise allowed to make use of the disputed domain names and/or the AIR FRANCE mark. Given this prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the Respondent has to come forward with clear evidence that it does possess such rights or interests. See, AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200; and Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
As the Respondent has failed to file a Response in these proceedings, the Panel concludes that, in answer to the Complainant’s prima facie case, the Respondent has provided neither evidence of circumstances of the type specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to a right or legitimate interest in the disputed domain names. Upon examination, the Panel finds no reason to believe that Respondent (as either “Casa Del Turismo” or “Travel Del Sol”) has been commonly known as any of the disputed domain names or as “Air France”, making paragraph 4(c)(ii) inapplicable to this case.
Moreover, the Panel accepts the Complainant’s uncontested contention that the Respondent is using the domain names only to furnish links to third party websites – some sponsored by direct competitors of the Complainant – which fails to constitute “a bona fide offering of goods or services” per paragraph 4(c)(i) of the UDRP, or “legitimate noncommercial or fair use” of the names per paragraph 4(c)(iii). See, for example, MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050; and Mattel, Inc. v. Domain Park Limited, NAF Claim No. FA1164348 (“Respondent is using the [disputed] domain name to display hyperlinks to a parked page with a list of third-party websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made a bona fide offering of goods or services under Policy [paragraph] 4(c)(i) or a legitimate noncommercial or fair use under Policy [paragraph] 4(c)(iii).”).
Accordingly, the Panel rules that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Due to the Complainant’s extensive international operations and fame, the Panel has independent knowledge of the Complainant and its business and is in agreement with the Complainant’s contentions that AIR FRANCE is a well-known and even famous mark. Thus, the Panel is convinced that the Respondent was also well aware of the Complainant’s mark when the Respondent registered the disputed domain names.
Moreover, as noted above, the Panel accepts the Complainant’s uncontested contention that the disputed domain names are used to host websites that offer links to the websites of third parties, some of which are the Complainant’s direct competitors. The Panel realizes that this is a common practice whereby a domain name owner will be compensated via a small fee each time an Internet user “clicks on” any of these links. This realization compels the Panel to the conclude that the Respondent has likely intentionally chosen and used the disputed domain names to attract, for commercial gain, Internet users to its website and, thusly, that the disputed domain names have been registered and used by the Respondent in bad faith per paragraph 4(b)(iv) of the Policy. See, O, Inc. v. Metro Media,WIPO Case No. DME2009-0001 (“Respondent’s website not only incorporates the dominant part of Complainant’s service mark, but, also, the content on Respondent’s website refers to and links to third parties offering services and goods competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors. This use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.”); and Lyonnaise de Banque v. Richard J.,WIPO Case No. D2006-0142.
Therefore, the Panel finds that the Complainant has shown that the disputed domain names were registered and are being used in bad faith. 7. Decision
For 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.
Dennis A. Foster
Sole Panelist
Dated: July 20, 2011
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