The Complainant is Société Air France, France, represented by MEYER & Partenaires, France.
The Respondent is Whois privacy protection service / Виктория Викторовна Айвазьян, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2021 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 September 9, 2021.
On September 7, 2021, the Center sent an email communication in English and Ukrainian to the Parties indicating the Registration Agreement for the disputed domain name is in Ukrainian and inviting the Parties to submit their preferences as to the language of the proceeding. On September 9, 2021, the Complainant submitted its request that English should be the language of the proceeding. The Respondent submitted no comments on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on September 15, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 1, 2021. 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 .UA Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a French airline passenger and freight company. The company was created in 1933 from the merger of Air Union, Air Orient, Société Générale de Transport Aérien (SGTA), Compagnie Internationale de Navigation Aérienne (CIDNA) and Compagnie Générale Aéropostale. As a result of the merger between Air Inter and Air France in 1997, “Compagnie Nationale Air France” becomes “Société Air France”. With a fleet of 302 airplanes, the Complainant serves 308 cities in 116 countries and represents 2,300 flights every day. The Complainant is operating an international web portal at “www.airfrance.com” and dedicated Ukrainian web portal at “www.airfrance.ua”.
The Complainant owns numerous registrations for AIR FRANCE trademarks covering various jurisdictions, for instance International registration No. 828334, registered on October 20, 2003, and inter alia designating Ukraine.
The disputed domain name was registered on July 15, 2015 and redirected to a website at “www.airarabia.kiev.ua” in Russian and English pretending to be local website for Air Arabia airlines and offering services competing with the Complainant’s services. At the time the Decision, the disputed domain name resolves to an inactive website. The Respondent’s contact email is associated with a number of domain names featuring various airlines brands and resolving to websites pretending to be their local official online representation.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical and confusingly similar to the Complainant’s trademark. The absence of space between the words “air” and “france” has no impact on the confusing similarity between the trademark AIR FRANCE and the disputed domain name. The Top-Level Domain “.kiev.ua” does not have an impact on the overall impression of the dominant portion of the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not related in any way to the Complainant’s business. The Complainant has granted neither authorization nor mandate or license to anybody to register or use the disputed domain name. The Respondent is not currently and has never been known under “airfrance” or “air france” or any of their potential combination. The Respondent registered the disputed domain name more than ten years after the registration of the Complainant’s trademark at a time when it was already well known in the whole Eurasian continent. The disputed domain name was used to redirect the users to a website that diverts the Complainants customers by promoting the commercial offers of a direct competitor Air Arabia.
The disputed domain name was registered and is being used in bad faith. The Respondent used the disputed domain name to redirect Internet users to a website of the Complainant’s competitor displaying a travel search engine and promoting competing commercial services. Such use of the disputed domain name, disturbing the Complainant’s online activities, has already been related with bad faith. Furthermore, the travel search engine displays one of the Complainant’s trademark, while none of the search results will display an offer proposed by the Complainant. No explanation or disclaimer has been displayed on the web page at the disputed domain name. This let the Internet users to believe that the disputed domain name may be related to any partnership between the Complainant and Air Arabia. This belief is prejudicial to the Complainant due to the risk of diversion of its customers. The Respondent is engaged in a pattern of infringing domain names registrations featuring brands of various airlines and pretending to be its local official websites.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of ProceedingsThe language of the Registration Agreement for the disputed domain name is Ukrainian. Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, while applying the provision on the language of the proceedings the Panel considers that it should be also ensured that the Parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language, since inter alia the disputed domain name redirects to the website with significant portion of content in English.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Ukrainian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Ukrainian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complainant is ordered to further translate its respective filings.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly SimilarThe TLD “.kiev.ua” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Elsevier BV vs Andrey Voloshuk,WIPO Case No. DUA2021-0012).
In cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UA-DRP standing (see, e.g., OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov, WIPO Case No. DUA2019-0001). The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.
Considering the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark in which the Complainant has rights, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.
C. Rights or Legitimate InterestsThe Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002).
The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov, WIPO Case No. DUA2019-0001).
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002).
Beyond looking at the domain name and the nature of any additional terms appended to it (whether descriptive, laudatory, derogatory, etc.), panels assess whether the overall facts and circumstances of the case support a fair use. To facilitate this assessment, the following factors are illustrative: (i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit, (ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded, (iii) whether it is clear to Internet users visiting the respondent’s website that it is not operated by the complainant, (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties, (v) where appropriate, whether a prominent link (including with explanatory text) is provided to the relevant trademark owner’s website, (vi) whether senders of email intended for the complainant but (because of user confusion) directed to the respondent are alerted that their message has been misdirected, (vii) whether there is an actual connection between the complainant’s trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and (viii) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline). In the present case the Respondent used the disputed domain name identical to the Complainant’s trademark to redirect to a website associated with the Complainant’s competitor and offering similar services. The Respondent also appears to be engaged in a pattern of registering domain names corresponding to marks held by the third parties. The above confirms this is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name pursuant to the .UA Policy.
Noting the high risk of implied affiliation between the disputed domain name and the identical well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., AB Electrolux v. Захаров Евгений, WIPOCase No. DUA2020-0006).
The fact that the disputed domain name no longer resolves to an active website does not support a finding that the disputed domain name is being used in connection with any bona fide offering of goods or services. (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002).
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the .UA Policy.
D. Registered or Used in Bad FaithThe Respondent’s use of the disputed domain name to purport to offer competing services shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith registration and use (see, e.g., Chewy Inc. v. Rostislav Karyi / Ростислав Карый,WIPO Case No. DUA2020-0007).
The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see, e.g., Google LLC vs Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009). The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in France and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.
According to paragraph 4(b)(iv) of the .UA Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In this case, the disputed domain name was resolving to a website associated with the Complainant’s competitor to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its services.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name
Taras Kyslyy
Sole Panelist
Date: November 3, 2021