The Complainant is Société AIR FRANCE of Roissy CDG, Cedex, France, represented by MEYER & Partenaires, France.
The Respondent is Consultores, Brian Glenn of San Jose, Costa Rica, representing himself. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2011. On July 1, 2011, the Center transmitted by email to N LLC. a request for registrar verification in connection with the disputed domain name. On July 5, 2011, N LLC transmitted by email to the Center its verification response:
(a) confirming that it was the registrar for the disputed domain name;
(b) the language of the registration agreement was English;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the disputed domain name;
(d) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint (which was the Registrar’s WhoIs protection service).
The Center sent an email communication to the Complainant on July 6, 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 amendment to the Complaint on July 12, 2011.
Also on July 5, 2011, the Registrar filed an informative filing with the Center through which the Registrar argued that Protected Domain Services, the named respondent in the Original Complaint, should not be a respondent in this matter as it was merely providing privacy services for the registrant, which maintained was the true and sole respondent.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Response was filed with the Center on July 22, 2011.
On July 25, 2011, the Complainant filed a purported Supplemental Filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 29, 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.
Having read the Supplemental Filing, the Panel issued Procedural Order No. 1 allowing the Respondent until August 12, 2011 in which to address the admissibility of the Complainant’s Supplemental Filing and, if the Respondent so wished, any submissions and evidence in answer to that proposed Supplemental Filing. As a consequence, the projected date for decision in this matter was extended to August 19, 2011.
The Respondent did not file a further response. 4. Factual Background
The Complainant is the French flag carrier, headquartered in Roissy CdG. It is a subsidiary of the Air French - KLM Group and a member of the SkyTeam Global Airline Alliance. The Complainant has been trading under the name Air France since 1933. It currently serves 32 destinations in France and operates worldwide scheduled passenger and cargo services to 183 destinations in 98 countries. Between April 2001 and March 2002, the Complainant carried 43.3 million passengers and had total revenue of EUR 12.53 Billion. In November 2004 the Complainant ranked as the largest European Airline with 25.5% market share and was the largest airline in the world in terms of operating revenue.
The Complainant has a number of domain names including:
In addition, the Complainant has operated since 2006 a subdomain, , specially designed for people seeking to access its website from mobile phones and other mobile devices.
The Complainant has a number of registered trademarks for AIR FRANCE including:
French Trademark No. 1,703,113, registered on October 31, 1991 in all International Classes;
French Trademark No. 99,811,269 registered on September 6 1999 in 32 International Classes;
United States of America Trademark No. 0610072 registered on August 2, 1955 for services in International Class 39;
Costa Rican Trademark No. 143410 registered on June 19, 2003 in International Class 35;
Costa Rican Trademark No. 143.413 registered on June 19, 2003 in International Class 38; and Costa Rican Trademark No. 179034 registered on April 16, 2008 in International Class 36.
The Respondent is located in Costa Rica.
The disputed domain name was registered on January 4, 2011.
Since its registration, the disputed domain name has not resolved to an active website. 5. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The Complainant has requested permission to file a supplemental submission. The Rules do permit panels to request further information. Whether or not unsolicited supplementary materials are accepted into the record however falls within the discretion of the Panel. That discretion is typically exercised in favor of acceptance where the Response raises matters which the Complainant could not reasonably have anticipated or where the supplemental filing is filed to correct factual errors.
The proposed Supplemental Filing does provide further information about the Respondent’s activities which arises out of the Response or responds to matters claimed in the Response which could not reasonably have been anticipated before the Response was filed. In addition, the Respondent has had ample time to address any inaccuracies or incompleteness in the proposed Supplemental Filing but has chosen to make no further submissions. In these circumstances, the Panel admits the Complainant’s proposed Supplemental Filing into the record. A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly proved ownership of the registered trademarks for AIR FRANCE referred to in section 4 above. The Complainant also contends that its trademark, AIR FRANCE, is a well-known trademark in the sense referred to in article 6bis of the Paris Convention. Having regard to the longevity and extent of use of the Complainant’s trademark, some of the details of which are referred to above, the Panel accepts that submission.
The disputed domain name is not identical to the Complainant's trademark. Therefore, the question is whether the disputed domain name is confusingly similar to the Complainant's trademark, AIR FRANCE.
The Complainant contends that the disputed domain name is simply the addition of the descriptive term “mobile” to its trademark and is therefore confusingly similar. The Respondent contends that he intends to use the disputed domain name in connection with a business related to mobile air conditioning. He submits further that “mobile air” is a term which many people would recognise as relating to mobile air conditioning products and services. In this connection, the Respondent refers to Google search results relating to the use of “mobile air” and “mobile air conditioning”. The Respondent also contends that the Complainant does not have rights or reputation in relation to air conditioning products or services.
The Respondent’s arguments on this question are predicated on a misunderstanding. On this part of the inquiry under the Policy, what is required is simply a comparison of the disputed domain name itself to the Complainant's proven trademarks: see, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.
The disputed domain names consists of the entirety of the Complainant’s trademark, AIR FRANCE, and an additional descriptive term, mobile, and the generic top level domain, .com.
The addition of the gTLD to the disputed domain names can be disregarded as simply a functional requirement of the domain name system. See, for example, Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Apart from that component, the disputed domain name must be assessed as a whole. The Panel considers that, looked at as whole, many Internet users are likely to read the disputed domain name as a combination of “mobile” and AIR FRANCE and consequently would be confused into thinking there was some association between the owner of the disputed domain name and the Complainant. The placement of the word “mobile” at the start of the disputed domain name rather than after AIR FRANCE is not likely to preclude or subvert that association. Assuming that the Respondent is right and some Internet users might think that the disputed domain name has some relationship to mobile air conditioning products and services in France, nonetheless the existence of a class of Internet users who would associate the disputed domain name with the Complainant is sufficient for a finding that the disputed domain name is confusingly similar to the Complainant’s trademark, AIR FRANCE. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where the respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0)), paragraph 2.1.
The Complainant contends that the Respondent is not related in any way to the Complainant's business. The Respondent is not one of the Complainant's agents and does not carry out any activity for, or have any business with the Complainant. The Complainant further contends that it has not granted any license or authorisation to the Respondent to use or register the disputed domain name. So far as the Complainant can establish, the Respondent is not known as, nor has ever been known as, "AIR FRANCE MOBILE" or any combination of those words.
The Respondent does not dispute these matters.
Rather, the Respondent says that he is in the process of establishing a website for reviews, sales and rental of mobile air conditioning. He contends that this field of activity is quite different from the field of activity in which he characterises the Complainant as acting: air travel and other travel related services, and, consequently, claims his activities will not infringe the Complainant's rights.
As noted above, the disputed domain name does not resolve to an active website and never has. The Respondent says that the website is "Under Construction". The disputed domain name does not resolve to a website which states that it is "Under Construction". Nor has the Respondent provided any evidence to support his claim that the website is under construction or otherwise showing that he has taken any genuine steps to establish such a website. Secondly, the Respondent has not provided any information to suggest that he is any way experienced in, or carrying on business in relation to, air-conditioning products. He appears to describe himself as "consultore" which might loosely be translated as "advisor" of some sort. Thirdly, the Respondent is based in Costa Rica. The Respondent does not provide any explanation about why someone located in Costa Rica would be embarking on a business apparently connected with France. For example, the Respondent has not claimed, nor provided any evidence to support a claim, that he has existing business in France or other ties with France.
Further, the Respondent's argument does not address the extremely wide scope of the Complainant's registered trademarks in France, which, amongst other things include goods in class 11 including air conditioning products.
In these circumstances, the Panel is not persuaded that the Respondent has the rights or legitimate interests which he claims. Accordingly, the Respondent has failed to rebut the prima facie case which the Complainant has established against him. Therefore, the Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel is reinforced in this conclusion when regard is had to the matters brought to light in the Complainant's Supplemental Filing discussed below. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant relies on the strength, longevity and notoriety of its trademark, AIR FRANCE, to found a presumption of registration of use in bad faith: relying on for example, Ebay Inc v. Wang Ming,WIPO Case No. D2006-1107 ().
The Respondent denies registration and use in bad faith. In support of his denial, the Respondent relies on two broad arguments: first, his argument that the disputed domain name is not confusingly similar to the Complainant's trademark, AIR FRANCE; and secondly, his contention that he registered the disputed domain name to operate a business related to mobile air conditioning.
As both those arguments have already been rejected by the Panel, the Respondent's denial of registration and use in bad faith must also fail having regard to the fame and longevity of the Complainant’s trademark and the likelihood that the Respondent knew of it.
The Panel is reinforced in that conclusion by the additional information exposed in the Complainant's Supplemental Filing.
First, the Complainant points out that the domain name component of the email address used by the Respondent in the WhoIs details for the disputed domain name resolves to the website of a business in Costa Rica, Consultores Turisticos Asociados, which identifies itself as a firm offering services "specifically for projects located in the Zona Maritima (ZMT) and for other tourism projects located anywhere within Costa Rica".
Secondly, the Supplemental Filing contains evidence that the Respondent has registered 73 domain names using the same email address. None of those domain names bear any obvious relationship to air conditioning. At least 3 of them are related to mobile booking for air travel: , , . While each of these additional domain names appear to be a generic or descriptive term, they demonstrate a familiarity or interest in mobile services related to travel and related services including air travel.
In these circumstances, it is plain that the Respondent knew of the Complainant's trademark, AIR FRANCE, when he registered the disputed domain name and it appears on the record in this case that he did so with the intention of taking advantage of the Complainant's trademark and good will.
Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith. Moreover, in the circumstances of this case, the passive holding of this disputed domain name is sufficient to constitute use of the disputed domain name in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In reaching the latter conclusion, the Panel does not rely solely on the 6 month period which has elapsed between the Respondent's registration of the disputed domain name and the filing of the Complaint. Rather, the Panel reaches this view having regard to the very close resemblance of the disputed domain name to the Complainant's famous trademark, AIR FRANCE, and the failure of the Respondent to substantiate his asserted justification of legitimate use in the face of compelling inferences to the contrary.
Accordingly, the Complainant has established the third requirement under the Policy. 6. Decision
For 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 the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: August 19, 2011
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