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Société Air France v. Richard J. [2005] GENDND 1599 (27 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Richard J.

Case No. D2005-0821

1. The Parties

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

The Respondent is Richard J., n/a, United States of America.

2. The Domain Names and Registrar

The disputed domain names <crewairfrance.com> and <gpairfrance.com> are registered with eNom Inc. Bellevue, Washington, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On August 1, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On the same day, August 1, 2005, eNom transmitted by email to the Center its verification response confirming that the disputed domain names shall be placed under a locked status and that the language of registration is English, accordingly the language applicable to the proceedings shall be English.

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 August 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2005.

The Center appointed Harini Narayanswamy as the Sole Panelist in this matter on September 13, 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

The Complainant is Société AIR FRANCE, a well known Airline company of the world, operating since 1933. It owns the widely known trademark “AIR FRANCE”.

The Complainant has registered and used its famous trademark in several countries throughout the world, which includes, trademark registrations for “AIR FRANCE” French nominative Trademark for all classes of 1957 Nice Agreement and trademark registrations in Class 32 and in Class 38, for Internet Services. It also has a valid trademark registration in the Respondent’s country, the United States of America, from the year 1955.

The Complainant operates an international web portal “www.airfrance.com” and has registered several other domain names including country code domain names incorporating its trademark “AIRFRANCE”. The “www.airfrance.us” website is dedicated for United States local use. Two other websites, of particular relevance here are the “www.gp.airfrance.fr” and “www.crew.airfrance.fr”, which the Complainant operates for secured access by its crew and employees in the “.fr” domain, the French ccTLD.

It came to the knowledge of the Complainant in December 2004 that a certain

Richard J. of California, United States of America had registered the domain names <gpairfrance.com> and <crewairfrance.com>, in the “.com” gTLD.

The Whois records, confirm that Richard J is the registrant, administrative, technical and billing contact for the two disputed domain names. No address has been provided, only the telephone number, fax number and an email address are displayed.

The records further show that the Respondent, Richard J. has in the past, been involved in administrative proceedings, in Credit Industriel et Commercial v. Richard J., WIPO Case No. D2005-0569 pertaining to the domain names <filbanquecic.com> and <cicfilbanque.com>.

5. Parties’ Contentions

A. Complainant

The Complainant states that the two domain names at issue are confusingly similar to its well know trademark ‘AIR FRANCE’,¹ which constitutes the distinctive part of the domain names. The term CREW and the abbreviation GP, which are prefixed to the trademark are commonly used by the Complainant.

The term CREW is a widely used term in the travel field to refer to flight personnel; while GP stands for ‘Gratuit Personnel’ (free for employees) which designates the facilities that are granted to its employees. Adding a prefix commonly used by the Complainant to the trademark does not serve to distinguish the domain names.

The risk of confusion is enhanced further, as per the Complainant, for the following reasons:

- Absence of spaces between the terms in domain names adds to the confusing similarity.²

- The domain names currently point to a parking webpage displaying hyperlinks to other sites in the field of tourism and travel.

- Both the disputed domain names refer to sub domains held by AIRFRANCE in the “.fr” domain.

The Complainant alleges that the Respondent has no rights or legitimate interest in the domain names as the Respondent is not related to the Complainant’s business, neither is the Respondent commonly known by these domain names. No license or authorization has been granted by the Complainant for use of these domain names.³

The Respondent uses the domain names to divert Internet users to competing websites through a ‘pay per click’ domain solution called SEDO. According to the Complainant such use of the domain names does not constitute bona fide use under paragraph 4(c)(i)⁴or non-commercial fair use under paragraph 4(c)(iii)⁵ of the Policy, as the Respondent uses the domain names to take advantage of the Complainant’s well known trademark to confuse and divert Internet users to competing websites in the field of travel.

It is the contention of the Complainant that the domain names were registered in bad faith as the Respondent was aware of the Complainants’ well known mark at the time of registration⁶ as the Respondent has associated the domain names to SEDO’s French advertising keyword “Billet Avion” meaning flight ticket.

Regarding use of the domain names in bad faith, the Complainant states that the domain names are being used by the Respondent to divert Internet users to a parking webpage where there are several hyperlinks. By clicking these hyperlinks, users are directed to a competing third party commercial website, which dilutes the mark of the Complainant. The hyper links further generate revenue for the Respondent through a “pay per click” domain solution. Such use constitutes bad faith use in previous decisions.⁷

Based on the email address of the Respondent given in the Whois database, the Complainant had conducted web searches which revealed that the email address of the Respondent is associated with more than 700 domain name registrations. A majority of these pertain to trademark rights of French companies or celebrities. These infringing domain names are mostly parked through SEDO’s French version, parking program and have been associated to an “advertising keyword”, to generate relevant hyperlinks.

The Complainant has supplied an illustrative list of such domain names which include:

<pajejaune.com>
<francesloisirs.com>
<charleliecouture.com>
<galaxieamneville.com>
<jeanpaulgauthier.com>
<olympiquedelyon.com>
<byardjeunesse.com>
<museedulouvers.com>
<brigittefontaine.com>
<restoducoeur.com>
<elisabethtessier.com>
<fnacconcert.com>
<viamichemin.com>
<francetelecomcom.com>
<marceldessailly.com>
<clickpeugeot.com>

These circumstances according to the Complainant are indicative of the Respondent’s bad faith pattern of conduct.

B. Respondent

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

6. Discussion and Findings

On the basis of the submissions and evidence adduced by the Complainant under paragraph 4(a) of the Policy, wherein the Complainant must prove that:

(i) The domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

(ii) The Respondent does not have any rights or legitimate interests in the domain names.

(iii) The domain names have been registered and used in bad faith.

the Panel finds as follows:

A. Identical or Confusingly Similar

The Complainant has furnished sufficient evidence of its rights in the trademark ‘AIRFRANCE’. The Panel agrees that the distinctive element of the domain names is the AIRFRANCE mark. The use of the prefix, ‘crew’ and ‘gp’ in combination with the trademark “AIR FRANCE’ and the precise manner in which it has been combined in the disputed domain names are of significance here.

It is fairly well established that all non- distinctive elements of a domain name, including the top level part of the domain name⁸ should be disregarded or ignored while considering the confusing similarity between the trademark and the domain name. The prefix “gp”, “crew” or the gTLD “.com” do not serve to distinguish the domain name from the mark. Similarly spaces, dots or the absence thereof in domain names is of little consequence.

It is evident that the Respondent made deliberate use of the trademark combined with the prefix, in a bid to confuse Internet users.⁹ Given the fame of the mark, the disputed domain names are bound to create a likelihood of confusion as to the origin and the possible affiliation of the domain names to the Complainant.

Unsuspecting Internet users would most likely associate both the domain names with the Complainant and may possibly even be misled to choose the one registered by the Respondent in the gTLD “.com” rather than the Complainant’s own website in the “.fr” ccTLD. The confusion of Internet users is heightened further as these domain names are almost identical to the Complainants own domain names in another parallel domain, namely the “.fr” ccTLD.

These are compelling reasons for the Panel to find that the disputed domain names <gpairfrance.com> and <crewairfrance.com> are confusingly similar to the Complainant’s trademark AIRFRANCE.

B. Rights or Legitimate Interests

The Respondent has not filed a response or claimed any rights in the domain names as provided for in paragraph 4(c) of the Policy. This leads to the presumption that the Respondent is unable to establish any such rights. (See Cornell Trading v. Web Interactive.com Inc., WIPO Case No. D2000-0887).

Based on the unchallenged assertions and evidence provided by the Complainant, the Panel is convinced, that the Complainant has not given any rights to the Respondent to use its trademark “AIR FRANCE”.

The Panel further finds that the Respondent does not have any legitimate interests in the domain names as the current use of the domain names are not bona fide use or non-commercial fair use in terms of the criteria set out under paragraph 4(c) of the Policy.

It has been held in numerous decisions that use of domain names that appropriate well known trademarks to promote competing products or services cannot be considered a bona fide offering of goods and services within the meaning of paragraph 4(c) of the Policy. See Société des Hotels Méridien v. LaPorte Holdings Inc., WIPO Case No. D2004-0849.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant asserts that the Respondent has registered and used the domain names in bad faith.

The Panel accepts the Complainant’s contention that the Respondent had knowledge of the well known ‘AIR FRANCE’ mark when he registered the domain names.¹⁰ The fact that the Respondent has associated the domain names to the advertising key words “Billet Avion” meaning flight ticket gives credence to the Complainant’s argument.

Paragraph 4(b)(iv) of the Policy provides that registration of a domain name, in order to intentionally utilize a well known trademark, in an attempted to attract, for commercial gain, Internet users to a website constitutes bad faith. The fact that the Respondent chose domain names directly reflecting the Complainant’s trademark and used it intentionally to attract Internet users to its website and further divert users to other websites for business services similar to those of the Complainant and to derive such commercial value from the Complainants’ mark constitutes evidence of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. See Am. Online, Inc. v. Tencent Comm. Corp., NAF Case No. FA 93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101.

The Complainant has provided evidence of domain name registrations made by the Respondent, which infringe other trademarks, particularly renowned French names <museedlouvers.com>, <brigittefotanine.com>, <francetelecomcom.com>, <clickpeugeot.com>. A previous UDRP proceeding in which the Respondent was implicated, Credit Industriel et Commercial v. Richard, WIPO Case No. D2005-0569 has found similarly.

The registration of domain names in bulk is known as domain name warehousing, which is considered evidence of bad faith. In Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214, the panel observed “Cyberpirates may attempt to warehouse multiple domain names containing other’s marks, sometimes hundreds or even thousands, and this factor permits a court to take such conduct into the consideration of whether a certain domain name was registered in bad faith. (...)Even if there is no working website corresponding to any of the warehoused domain names, warehousing prevents trademark owners from using those names for their business”.¹¹

The Policy makers in their wisdom had intentionally left the list of examples of circumstances where bad faith may be found under paragraph 4(b), as an illustrative one rather than an exhaustive one. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. New and ingenious ways of registering of domain names which infringe trademark rights to confuse Internet users are resorted to continuously. The very objective of the Policy is to curb such registration and use of domain names where the registrant seeks to profit from exploiting the trademark of another. See Matchcom LP v. Bil Zag, WIPO Case D2004-0230 concerning the domain name <nylaws.org>. The systematic use of the trademark by the Respondent herein, who has registered similar and parallel domain names to those owned and used by the Complainant in another top level domain, the ccTLD “.fr” in this case, is yet another indication of intentional bad faith.

In the light of all that has been discussed above, the Panel is convinced of bad faith registration and use of the 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 <gpairfrance.com> and <crewairfrance.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Dated: September 27, 2005

² Complaint refers to cases British Airways Plc v. Cadmos LLC and Francis R Grenier, WIPO Case No. D2002-0612. British Airways case regarding <britishairways.info> and Société Air France v. The World of Travel, WIPO Case No. D2002-0485 regarding <last-minute-air-france.com> and<last-minute–air-france.net>.

³ Gurlain SA v. Peikang, WIPO Case No. D2000-0055

⁴ Wedding Channel.com v. NOLDC, NAF FA 0408000310971

⁵ Six Continent Hotels v. Patrick ORY, WIPO Case No. D2003-0098

⁶ Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 regarding <guinessbeer.com>.

⁷ Société Air France v. Alvaro Collazo, WIPO Case D2003-0417 and . Alta Vista v. Krotov, WIPO Case D2000-1091 and In Hewlett Packard Company v. Alvaro Collazo, NAF Claim No FA 0302000144628.

⁸ See Wal-Mart Stpres, Inc. v. Walsucks and Walmarket Puerto Rico3, stating that: “[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance.”

⁹ The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493). Micro Electronics, Inc. v. J. Lee, WIPO Case No. D2005-0170,: “the Respondent is attempting to attract Internet users unwittingly to his site for commercial gain – in the hope that Internet users would be confused into thinking that the site of the disputed domain name is linked to the legitimate business of the Complainant.”

¹⁰ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.4
“ …where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.”

¹¹ Jerome Gilson and Anne Gilson LaLonde, the anticybersquatting consumer protection act and the ICANN Uniform Domain Name Dispute Resolution Policy. Trademark Protection and Practice. Lexis Publishing 2000. New York, United States of America. See, Fernando Triana, Esq. Panel ruling in, WIPO Case No. D2004-0214.