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Société Air France v. Kim Hyungho [2005] GENDND 1318 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Kim Hyungho

Case No. D2005-0442

1. The Parties

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

The Respondent is Kim Hyungho of Gwangju, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <www-airfrance.com> is registered with Cydentity, Inc. dba Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2005. On April 26, 2005, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On April 28, 2005, Cydentity, Inc. dba Cypack.com transmitted by email 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 May 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2005.

The Center appointed Thomas P. Pinansky as the Sole Panelist in this matter on June 10, 2005. 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

Société Air France is one of the world’s major airline companies, tracing its origins back to 1933. Complainant founded the Skyteam Alliance in 2000 featuring currently nine major international airlines including Korean Air.

Air France is the trade name of the Complainant, used in commerce since 1933. Complainant is the registered owner of a large number of trademarks consisting or including “AIR FRANCE”.

Société Air France is operating an international web portal at “www.airfrance.com”. Complainant has also registered several generic and country code top-level domain names consisting of or incorporating the trademark AIR FRANCE.

Société Air France is the registered owner of trademarks in France and in the Republic of Korea including “AIR FRANCE”, French nominative trademark No. 1, 703, 113 of October 31,1991 for all classes of the 1957 Nice Agreement, renewed on September 27, 2001; “AIR FRANCE” French nominative trademark No. 99, 811, 269 of September 6, 1999, in 32 classes of the Nice Agreement, including class 38 for Internet services; “AIR FRANCE + stripy device” Korean semi-figurative trademark No. 63151, No. 2099 and No. 38838 for classes 12 and 39 of the 1957 Nice Agreement, and for national class 108, respectively.

On December 27, 2004, Société Air France was informed that a person named Kim Hyungho, located in the Republic of Korea, had registered on November 26, 2004 the domain name <www-airfrance.com>.

Kim Hyungo is the registrant, administrative, technical and billing contract of the disputed domain name.

Kim Hyungho is the registrant and/or administrative contact for more than 1300 domain names, some of them consisting of third parties’ trademarks.

5. Parties’ Contentions

A. Complainant

Société Air France claims that the domain name <www-airfrance.com> is confusingly similar to its trademark “AIR FRANCE”. The trademark “AIR FRANCE” is entirely reproduced in the disputed domain name.

Prior cases under the UDRP have ruled that the absence of space or stresses in domain names added to the trademark basis has to be ignored in assessing the question of identity or confusing similarity. See, e.g. British Airways v. Cadmos LLC, WIPO Case No. D2002-0612 (<britishairways.info>); Société Air France v. The World Travel, WIPO Case No. D2002-0485 (<lastminute-air-france.com> and <lastminute-air-france.net>).

The domain name combines the Complainant’s famous trademark with the prefix “www”-. WWW is the well-known acronym for “World Wide Web” and is an extremely common prefix in the context of domain names. The addition of the prefix “www-” in front of the Complainant’s well-known trademark is not sufficient to confer a self distinctiveness to the domain name in issue, but on the contrary appears undoubtedly designed to take advantage of the mistake likely to be made by Internet users when trying to access the Complainant’s international web portal at “www.airfrance.com”, i.e. replacing the dot before the second level domain, <airfrance> with a dash. As to case law, the 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. See e.g. Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 (<wwwairfrance.com>); Viacom International Inc. v. Erik Peterson, WIPO Case No. D2000-0346 (<www-mtv.com>); Wal-Mart Stores, Inc. v. Longo WIPO Case No. D2004-0816 (<www-walmart.com>); Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787 (<www-jkrowling.com>); AT&T Corp. v. Byeong Deog Im, WIPO Case No. D2004-0026 (<att.com>); adidas-Salomon AG v. Domain Locations, WIPO Case No. D2003-0489 (www-adidas.com).

Kim Hungho should be considered as having no rights or legitimate interests in respect of the domain name <www-airfrance.com>. The Respondent is not related in any way to the Complainant’s business. He is not one of its agents and does not carry out any activity for, or has any business with it.

The Respondent is not currently and has never been known under the wording “Air France”, or under the combination of this trademark with the wording “www-”. No. license or authorization has been granted to Kim Hyungho to make any use, nor apply for registration of the domain name <www-airfrance.com>. In similar circumstances, panels decided that the respondent had neither rights nor legitimate interests in issuing domain names. See e.g. Guerlain SA v. Peikang, WIPO Case No. D2000-0055.

Société Air France claims that the domain name <www-airfrance.com> has been registered by Kim Hyungho to take advantage of the Complainant’s well-known trademark to confuse and divert Internet users to other websites for some of them in the field or tourism and travel through a “pay per click” domain parking solution. Such use is not a bona fide offering of goods or services under Policy 4(c)(i), or a non-commercial or fair use under Policy  4(c)(iii). See e.g. Six Continent Hotels v. Patrick ORY, WIPO Case No. D2003-0098; WeddingChannel.com v. NOLDC, NAF FA0408000310971.

Respondent has not engaged in any action that shows he has a right or legitimate interest in the disputed domain name. The Respondent could not reasonably ignore the well-known trademark “AIR FRANCE” at the time he applied for registration of the confusingly similar domain name <www-airfrance.com>.

In similar cases, panels decided that the notoriety of a complainant’s trademark “creates a prima facie presumption that the respondent registered the domain name for the purpose of selling it to complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with complainant’s mark” See e.g. WIPO Case No. D2001-0020 regarding <guinessbeer.com>). In accordance with this prima facie presumption, the Complainant claims that Kim Hyungho could not have ignored Air France’s international reputation at the time he registered the disputed domain name.

The Respondent registered this domain name precisely because he knew the well-known character of the trademark “AIR FRANCE”, for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and to divert Internet users to other commercial websites through hyperlinks. See e.g. Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 (<wwwairfrance.com>).

The Respondent uses the disputed domain name to divert Internet users to webpages on which several hyperlinks are displayed, consisting for some of them of results in the field of tourism and travel. By clicking on these hyperlinks, users are directed to competing third-party commercial websites. Some of those hyperlinks generated revenue to the benefit of the Respondent through a “pay per click” domain parking solution (in the present case, Domain Sponsor program). It is now established that “even if such use commonly occurs on so-called ‘parking’ pages, Respondent has a responsibility for the content Respondent allows to be posted at the site.” See e.g. Hewlett Packard Company v. Alvaro Collazo, NAF Claim No.FA0302000144628; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417.

In such circumstances, panels decided in earlier cases that the respondent uses domain name at stake in bad faith. See e.g. Alta Vista v. Krotov, WIPO Case No. D2000-1091; AIR FRANCE v. Alvaro Collazo, WIPO Case No. D2003-0417.

Société Air France points out that tourism creates important traffic on the Internet. By registering the disputed domain name, Kim Hyungho expected to take financial advantage of this paying business.

Société Air France also points to Kim Hyungho’s earlier proceeding at the Center. It is difficult to imagine any good faith purpose for which the Respondent might have registered the domain name <www-airfrance.com> taking into account its pattern of conduct consisting of registering mistyped domain names.

As a consequence, the Respondent is undoubtedly not making any good faith use of the disputed domain name. For all these reasons, Kim Hyungho has engaged in bad faith registration and use of the domain name <www-airfrance.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Selection of Language

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however the Complainant asserts that English should be the language of the proceeding.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, it is without question that the registration agreement for the domain name in dispute was made in the Korean language. However, it is also apparent from the written communications exchanged between the parties the Respondent has sufficient ability communicating in the English language.

On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but on the condition that (ii) the Respondent shall be permitted to submit any documents or assertions in Korean. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, (<cebit.com>).

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, Complainants must prove each of the following:

(i) the Domain Name is identical or confusingly similar to Complainants’ trademark or service mark;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Complainant’s marks are registered throughout the world. The Complainant owns numerous marks using “AIR FRANCE”. The Domain Name wholly incorporates Complainant’s distinctive marks and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Name; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the Domain Name pursuant to paragraph 4(b) of the Policy.

E. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is well known worldwide, it is unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States, or of many other countries would have made Complainant’s registrations known to the Respondent.

The Respondent has, in using the Domain Name, diverted Internet users to competing websites, and the Panel notes that the Respondent has done so on previous occasions. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at paragraph 8).

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the Domain Name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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 name <www-airfrance.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Dated: July 11, 2005