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Société Air France v. Hosters direct [2004] GENDND 485 (8 April 2004)

1. The Parties

The Complainant is Société Air France, Roissy CDG, France, represented by MEYER & Partenaires, France.

The Respondent is Hosters direct, Ste Alvère, France.

2. The Domain Names and Registrar

The disputed domain names <airfrancedirect.com> and <airfrancedirect.net> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2004. On March 5, 2004, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain names at issue. Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 March 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2004. The Response was filed with the Center on March 17, 2004.

The Center appointed Christiane Féral-Schuhl as the Sole Panelist in this matter on March 26, 2004. 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 one of the world's major airline companies based in France. It operates a website at "http://www.airfrance.com." It also registered generic and country code top level domain names such as <airfrance.fr>.

The Complainant is the registered owner of a large number of trademarks consisting or including the words "AIR FRANCE." As an example, the Complainant is the registered owner of the following trademarks:

- "AIR FRANCE," French nominative trademark No. 1,703,113 of October 1, 1991 for all classes of the 1957 Nice Agreement; renewed on September 27, 2001;

- "AIR FRANCE," French nominative trademark No. 99,811,269 of October 6, 1999 in 32 classes of the Nice Agreement and especially in class 38 for Internet services.

The Complainant's name, "Air France," is well and widely known throughout the world and recognized as such by the WIPO Mediation and Arbitration Center (WIPO Case No. D2002-0485 <lastminute-air-france.com> and <lastminute-air-france.net>; WIPO Case No. D2003-0830 <airfrance-klm.net>, <airfrance-klm.org> and <airfrance-klm.biz>).

As at the date when the complaint was filed, <airfrancedirect.com> and <airfrancedirect.net> were held by an entity called Hosting Direct (represented by Mr. Kenneth Austin as administrative contact).

However, in December 2002, the domain names were held by an entity named Webs Hosters and activated a web page mentioning: "This domain is for sale. Please click on the `Domain Names for Sale' link above to make an offer for it."

In January 2003, the Complainant's trademark counsels sent a formal notice to Webs Hosters to assign the domain names to the Complainant.

The Complainant's counsel received a response from Mr. Kenneth Austin, who stated that the domain names were owned by his "client" France Direct. He then stated, in a second letter, that France Direct was a French company dealing with "all aspects of French tourism" and that at the time he registered <airfrancedirect.com> and <airfrancedirect.net>, he was "trying to negotiate affiliate deals with a number of airlines to offer _his_ clients flights to France." Since this project had not come off, he "then placed the domains in _their_ domain sellers program on `www.webshosters.com' where they are for sale."

On July 2003, the domain names pointed to the homepage of a website located at "http://www.francedirect.net," dedicated to France Direct, and related to the tourism and travel business. At the same date, the domain names <airfrancedirect.com> and <airfrancedirect.net> were still for sale on the website located at "http://www.webshosters.com."

In October 2003, the ownership of the domain names was transferred in favor of a new registrant named Hosters Direct.

The Complainant then sent a formal letter to the Respondent asking the Respondent to assign the domain names.

Mr. Kenneth Austin responded to this formal letter stating that "Hosters Direct was set up as a private hosting company to host the various internet interests of the France Direct Group."

At the time of the Complaint, the domain names still pointed to the website located at the address "http://www.francedirect.net."

5. Parties' Contentions

A. Complainant

The Complainant claims that the domain names are confusingly similar to its trademark as "AIR FRANCE" is entirely reproduced into the disputed domain names.

The Complainant argues that previous decisions have ruled that the absence of space or stresses has to be ignored in assessing the question of identity or confusing similarity (British Airways v. Cadmos LLC and Francis R Grenier, WIPO Case No. D2002-0612, <britishairways.info>)

The Complainant also emphasises that the domain names combine its trademark "AIR FRANCE" with the word <direct>, which is generic both in the French and English languages.

According to the Complainant, the addition of the word "direct" does not eliminate any risk of confusion with the Complainant's trademark, which is the only distinctive element of the domain names, but on the contrary, suggests that the said domain names refer to the French airline company.

In addition, the Complainant explains that 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 the Complainant's trademark. As an example, in WIPO Case No. D2003-0844 <lipostabildirect.com>, the Complainant recalls that the panel stated: "Direct" being a generic word, the dominant element remains "lipostabil" (...) In other words, the mere addition of the word "direct" has not such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant's trademarks." In WIPO Case No. D2001-0958 <aspreydirect.com>, the panel stated: "The Domain Name is confusingly similar to the trademark `Asprey' in which the Complainant undoubtedly has registered and unregistered rights. The Domain Name would indicate to many people a website of the famous jeweler, Asprey, offering direct sales of its jewelry." The Complainant also refers to WIPO Case No. D2000-1113 <woolworthsdirect.com> .

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the domain names <airfrancedirect.com> and <airfrancedirect.net>.

Indeed, the Complainant explains that the Respondent is not currently and has never been known under the wording Air France, nor the combination of this trademark with the generic term "direct," and that the Respondent is not in any way related to the Complainant's business, is not one of its agents and does not carry out any activity for, or have any business relationship with it.

The Complainant indicates that no authorisation has ever been given to the Respondent to make any use of its trademark, nor to acquire the domain names at issue and argues that in such a case, the panel should decide for the transfer (Guerlain SA v. Peikang, WIPO Case No. D2000-0055).

The Complainant indicates that the Respondent is obviously related to the French registered company France Direct, a company with an extensive activity in the field of tourism and travel. Both litigated domain names point to the active website located at "http://www.francedirect.net" that is dedicated to the promotion of France Direct products and services.

The Complainant also specifies that the Respondent is in the same field as the Complainant and that the use of the contested domain names allows the Respondent to take advantage of the Complainant's trademark to confuse and divert internet users to the France Direct website.

The Complainant then concludes that such use is not a bona-fide offering of goods or services under Policy 4(c)(i), or non-commercial or fair use under Policy 4(c)(iii) as decided in Six Continent Hotels v. Patrick ORY, WIPO Case No. D2003-0098, <holidayinnhotels.org>: "The Respondent, by currently using the domain (...) to re-sell services in the same field of endeavor as the Complainant (...) is intentionally seeking to exploit user confusion by diverting internet users away from the Complainant's website to the Respondent's website" and Delta Corporate Identity v. Patrick ORY, Claim FA02000109375, <delta-airlines-fares.com> and <deltaairlinesreservation.com>.

As far as bad faith is concerned, the Complainant explains that the Respondent has not registered the contested domain names but acquired them. Hence, he recalls that bad faith acquisition satisfies the requirement of bad faith registration under the Policy and cites numerous decisions to support his case (Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847, <madonna.com>; Societe Air France v. Vladimir Federov, WIPO Case No. D2003-0639, <wwwairfrance.com>; Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206; Toronto Convention & Visitors association v. This domain is for sale, WIPO Case No. D2001-1463).

Moreover, the Complainant claims that the Respondent is bound by the same registrar's terms and conditions as its predecessor as decided, for example, in Societe Air France v. Vladimir Federov, WIPO Case No. D2003-0639, <wwwairfrance.com>, where the Panel stated that "the Respondent's awareness to those terms and conditions can be presumed(...)." The Complainant also believes that there is collusion between the Respondent and its predecessor in title, and that such a collusion constitutes bad faith such as in WIPO Case No. D2001-0206.

The Complainant claims that Webs Hosters, original holder of the domain names, registered said domain names in bad faith and that Hosters Direct acquired them in bad faith as the trademark "AIR FRANCE" is registered and widely used throughout the world. Hence, according to the Complainant, at the time of the registration and of the acquisition, Webs Hosters and Hosters Direct could not have been unaware of the Complainant's trademark.

The Complainant cites similar cases where the panel has concluded that the notoriety of a Complainant's trademark creates a prima facie presumption that the Respondent registered the domain name in bad faith (Société Softissimo v. Owner, WIPO Case No. D2001-1105, <reverso.com>; WIPO Case No. D2001-0020, <guinessbeer.com>; Digi Int'l v. DDI Sys., NAF FA124506).

In addition, the Complainant explains that such knowledge of the Complainant's trademark is even more obvious considering the Respondent's activity: tourism.

Secondly, the Complainant claims that both former registrant, Webs Hosters, and current owner, Hosters Direct's operating of the active websites under the contested domain names constitute bad faith use.

As for the original registrant, the Complainant specifies that the domain names pointed to a page where said domain names were for sale at a minimum price of US$600.

The Complainant claims that such conduct constitutes bad faith use and cites numerous cases (Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033, <maserati.org>; Reckitt Benckiser AG v. Nazim Oren, Case No. D2002-0286; ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425; BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms, WIPO Case No. D2001-1409).

Regarding the Respondent's use of the contested domain names, the Complainant indicates that the contested domain names point to the website located at "http://www.francedirect.net."

The Complainant emphasises that the Respondent "has now become an affiliate of Expedia.com, one of the largest air travel groups in the world, which is owned by Microsoft and offers flights world-wide."

As a consequence, according to the Complainant, the Respondent is diverting consumers to commercial websites selling products and services in the field of tourism and travel, which is exactly the same sphere in which the Complainant is acting. By doing so, the Respondent has no other purpose than to benefit illegally from the fame and renown of Complainant's trademark.

The Complainant cites a similar case were the panel concluded that bad faith use was constituted (Delta Corporate Identity v. Patrick ORY, NAF Claim FA02041000109375, <delta-airlines-fares.com> and <deltaairlinesreservation.com>).

The Complainant considers that the Respondent is obviously not making any legitimate non-commercial or fair use of the domain names, because such use can mislead consumers by offering competing services, without having acquired any license or permission from Complainant, which is the legitimate owner of the trademark "AIR FRANCE."

The Complainant also wishes to point out the well-known character of the trademark "AIR FRANCE" which has to be taken into account in assessing the question of bad faith use (Audi AG v. Hans Wolf, Case No. D2001-0148, <audi-lamborghini.com>).

B. Respondent

The Respondent introduces himself as Kenneth James Austin, being the sole owner of the companies Hosters Direct and France Direct.

The Respondent explains that in 2001, he went into partnership with a company and set up with said company Webs Hosters, "www.webshosters.com," a website which offers website hosting, creation, and which also "buys and sells domain names."

The Respondent indicates that in October 2002, he purchased a number of websites "that related to my travel business that had francedirect in the title" including "www.airfrancedirect.com."

The Respondent acknowledges that in January 2003, the domain names in question were "for sale," "along with many others that we had either bought for the purpose of reselling."

The Respondent also explains that he "can honestly say that the words airfrance never crossed my mind when I bought the domain name only that it contained francedirect."

The Respondent specifies that, in June 2003, he set up Hosters Direct as a name server and moved all of his websites over to it for a question of bandwidth and that the domains in question were renewed in a bulk renewal process which is a feature of the Go Daddy service.

At last, the Respondent acknowledges that he offered to let Air France buy the domain names in question for the going Verisign rate of $35 each per year registered, plus any out of pocket expenses to cover bank charges etc.

The Respondent also acknowledges that he is not acting for or associated with Air France.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has proven that he is the owner of the trademark "AIR FRANCE."

Such trademark is included in the two contested domain names.

The fact that the term "direct" is added to Complainant's trademark does not eliminate the identity or at least the similarity between Complainant's trademark and the contested domain name as "direct" is a descriptive term.

In numerous cases, it has been stated that a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP. As an example, in WIPO Case No. D2003-0844 <lipostabildirect.com>, the panel stated that "`Direct' being a generic word, the dominant element remains `lipostabil' (...). In other words, the mere addition of the word `direct' has not such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant's trademarks." In WIPO Case No. D2001-0958 <aspreydirect.com> it has been handed down: "The Domain Name is confusingly similar to the trademark `Asprey' in which the Complainant undoubtedly has registered and unregistered rights. The Domain Name would indicate to many people a website of the famous jeweller, Asprey, offering direct sales of its jewelry."

As a consequence, the panel finds that the action brought by Complainant meets the requirement of Article 4a)i) of the UDRP.

B. Rights or Legitimate Interests

The Respondent acknowledges that he is not acting for or associated with the Complainant.

In addition, the panel notes that the Complainant's trademark is a well-known trademark, as stated in previous domain name disputes (WIPO Case No. D2002-0485 <lastminute-air-france.com> and <lastminute-air-france.net>; WIPO Case No. D2003-0830 <airfrance-klm.net>, <airfrance-klm.org> and <airfrance-klm.biz>).

As a consequence, the decision handed down by the panel in Guerlain SA v. Peikang, WIPO Case No. D2000-0055, is perfectly applicable to the present case. Indeed, "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent."

Moreover, the panel notes that the Respondent acknowledges that, in January 2003, the domain names in question were "for sale."

As a consequence, the panel concludes in the present case that the Respondent has not proven any rights or legitimate interest in the contested domain names.

C. Registered and Used in Bad Faith

The trademark "AIR FRANCE" is registered and widely used throughout the world and recognised as such by previous WIPO arbitration decisions.

As in previous cases, the panel concludes that the notoriety of the Complainant's trademark creates a prima facie presumption that the Respondent registered the domain name in bad faith (Société Softissimo v. Owner, WIPO Case No. D2001-1105, <reverso.com>; WIPO Case No. D2001-0020 <guinessbeer.com>; Digi Int'l v. DDI Sys., Claim FA124506)

Such knowledge of the Complainant's trademark is even more obvious considering the Respondent's field of activity: the travel business, which is the same as the Complainant's.

Therefore, at the time of the acquisition of the contested domain names, the Respondent could not have been unaware of the Complainant's trademark.

As a consequence, the panel concludes that the Respondent's acquisition of the contested domain names was made in bad faith.

Meanwhile, the panel recalls that bad faith acquisition satisfies the requirement of bad faith registration under the Policy (Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847).

As far as bad faith use is concerned, the Panel notes that the Respondent acknowledges that in January 2003, the domain names in question were "for sale," "along with many others that we had either bought for the purpose of reselling."

The Respondent also acknowledges that he "offered to let Air France buy the domain names in question for the going Verisign rate of $35 each per year registered, plus any out of pocket expenses to cover bank charges etc."

In addition, at the time of the Complaint, the contested domain names pointed to the website located at "http://www.francedirect.net" which sells vacation trips.

Respondent explained that his company "has now become an affiliate of Expedia.com, one of the largest air travel groups in the world, which is owned by Microsoft and offers flights world-wide."

The panel considers that by knowingly using the contested domain names in such manner, the Respondent is diverting consumers to a commercial website selling products and services in the field of tourism and travel, which is exactly the same sphere in which the Complainant is acting. By doing so, the Respondent has no other purpose than to benefit illegally from the fame and renown of Complainant's trademark.

Hence, the panel concludes that the Respondent's behaviour constitutes bad faith use of the contested domain names.

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 <airfrancedirect.com> and <airfrancedirect.net> be transferred to the Complainant.