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Société Air France v. Mansour Elseify, DomainsNext.com [2005] GENDND 1972 (2 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Mansour Elseify, DomainsNext.com

Case No. D2005-0944

1. The Parties

The Complainant is Société Air France of Roissy, France (the “Complainant”), represented by Meyer & Partenaires, France.

The Respondent is Mansour Elseify, Domainsnext.com, of Laguna Beach, United States of America (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <airfrancea380.com> (the “Domain Name”) is registered with InnerWise, Inc. d/b/a ItsYourDomain.com (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2005. On September 9, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar 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 September 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2005. The Response was filed with the Center on October 4, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on October 19, 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.

It is convenient to mention here that on September 19, 2005, the Respondent requested that the Complainant’s Exhibits, Annex I-1 and Annex I-2, be translated from French into English. On September 21, 2005, the Center responded pointing out that the Annexes in question were simply French registration and renewal documents for the trade mark AIR FRANCE. The Center took the view that the translation into English was unnecessary, but informed the Respondent that the Panel had the power to review the matter.

The Panel has reviewed the matter. For the purposes of paragraph 4(a)(i) of the Policy, it is only necessary for the Complainant to demonstrate rights in the trade mark in question. The Complaint contains evidence of several relevant trade mark registrations, one of which is a United States registration, the language of which is of course English. For the purposes of this proceeding, the Panel has no need to consider the French language documents and will ignore them.

4. Factual Background

The Complainant operates the airline known as AIR FRANCE, an airline which has traded under that name for several decades.

The Complainant claims to be the proprietor of a large number of trade mark registrations featuring the mark AIR FRANCE. For the purposes of this proceeding, and notwithstanding the Respondent’s assertions to the contrary (see below), the Panel accepts as fact that the Complainant is the proprietor of United States registration number 0610072 AIR FRANCE (words) for “air transportation of passengers and air and motor transportation of freight” dated July 16, 1953.

The Complainant operates its principal website at “www.airfrance.com”.

The Complainant has succeeded in two previous complaints under the Policy involving domain names featuring the words AIR FRANCE, namely Air France v. Kitchkulture, WIPO Case No. D2002-0158, <my-airfrance.com> and Société Air France v. Henry Chan, WIPO Case No. D2004-0239, airfranceholiday.com>.

On June 18, 2001, the Complainant signed the contract for the purchase of a substantial number of Airbus A380 aircraft, the first of which is due for delivery in 2006.

A380 is a trade mark of Airbus Deutschland GMBH. Airbus Deutschland GMBH has succeeded in a WIPO complaint involving A380, namely Airbus Deutschland Gmbh v. DOMAIN-NAME-4-SALE, WIPO Case No. D2005-0092, <a380.com>.

The Respondent is a domain name re-seller for the Registrar.

The official launch of the A380 aircraft took place in Toulouse on January 18, 2005.

On January 19, 2005, the Respondent registered the Domain Name.

The Domain Name is connected to a website at “www.mydiscountdomains.com” which is a parking page for the Respondent featuring inter alia an advertisement for the Respondent’s domain name registration business. On July 1, 2005, the Complainant’s representatives wrote by email and registered mail to the Respondent drawing the Respondent’s attention to the Complainant’s rights and seeking inter alia transfer of the Domain Name. The letter refers to a previous communication sent by the Complainant’s representatives on March 30, 2005, but no details of that communication are before the Panel. The Respondent did not reply to the Complainant’s letter dated July 1, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its AIR FRANCE trade mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent is not in any way associated with the Complainant or its business and that the Respondent is not currently and never has been known under the name AIR FRANCE or under the combination of AIR FRANCE and A380.

The Complainant contends that the Domain Name has been registered by the Respondent to take advantage of the Complainant’s well known trade mark to confuse and divert Internet users.

The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith.

The Complainant contends that the Respondent must have been well aware of the Complainant’s trade mark AIR FRANCE when the Domain Name was registered and particularly when the Domain Name features the Complainant’s trade mark in combination with the trade mark A380, another trade mark with which the Complainant’s airline is so closely associated.

The Complainant contends that there can be no good faith purpose in registering such a unique and specific domain name.

The Complaint goes on stating that “the Respondent has registered this domain name precisely because he knew the well known character of the trade mark “Air France”, for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and divert Internet users to another website”.

Finally, the Complainant observes that the Domain Name was registered on the day after the official presentation of the A380 aircraft. The Complainant produces a <cbsnews.com> story dated January 18, 2005, and headed “Airbus unveils superjumbo jet”.

As to bad faith use, the Complainant contends that the linking of the domain name to the “www.mydiscountdomains.com” site is clearly intended to divert Internet users from a site believed by them to be an Air France site to the Respondent’s commercial home page. In so doing, traffic is generated to the benefit of the Respondent’s site and “by diluting the fame and renown of the Complainant’s fame and trade mark”.

The Complainant further complains that the Respondent has prevented the Complainant and its partner Airbus Group from reflecting their partnership in a corresponding domain name.

B. Respondent

The Respondent contends that “the domain name does not have a similarity to a trade mark owned by the Complainant but rather has a similarity to a domain name which consists of two generic English words that the Complainant registered to use for a website.” The Panel takes this to be a reference to the Complainant’s domain name, <airfrance.com>.

The Respondent contends that the Complainant has produced no evidence of any kind in the English language to demonstrate that the Complainant has trade mark rights in the words AIR FRANCE. He says that the documents produced are all either in the English language or have expired.

The Respondent contends that there is no likelihood of confusion. He states “none of the examples that the Complainant has used to show the similarity and the confusion between the disputed name and their trade name that does not exist proves in any way shape or form that this confusion exists. In many instances that the Complainant awarded by WIPO a disputed domain name, they either let the name expire or go nowhere which results in an error page. The risk of confusion does not exist.”

He also says in this regard: “Many major companies worldwide share their generic trade mark name with other companies which provide different services or in different geographic locations”.

Finally, on this topic, he observes that only five visitors have clicked through to the “www.mydiscountdomains.com” website.

The Respondent denies that he has no rights or legitimate interests in respect of the domain name. He says:

“The Respondent never needed a permission from the Complainant in order to register the domain name since the Complainant has no right to the character string airfrance, and since the Complainant never created a brand name he must accept sharing the generic name with others. Many companies have created their own brand name in order to be granted the exclusivity of this brand, and since this airline has been privatized and no longer owned by the government of France, they should seek an alternative name if they wish to gain an exclusive right to this brand. The world community cannot afford to give away the exclusive right to words which we must keep to be used freely by future generations. If anyone is squatting at this time, it is the Complainant by applying for a trademark for services no airline would perform, and their application for those services demonstrates their ambition to have an exclusive right to every imaginable service. We are happy that the USPTO has refused their application. This demonstrates our unequivocal right to the disputed domain name.”

As to whether the domain name has been registered and is being used in bad faith the Respondent has this to say:

“The disputed domain name was never registered in bad faith and was not registered to divert traffic to the respondent’s website since the traffic generated is non-existent. In the past, and at present, and in the future the domain name will remain parked on Itsyourdomain.com’s servers with tens of thousands of other domain names registered through our website and owned by many major corporations in the United States and many famous persons in the entertainment business and many cities worldwide. We never approached the Complainant or any other party to sell the domain name. The future commercial benefit to us is nil or non-existent. When the domain name was registered, we left it for future generations or legitimate parties to use the domain name to create something beneficial to the world as a whole. There is no website called airfranceconcord owned by a third party that can make an historical documentation of this model for future generations, give clear statistics of this model. Why? Every person who attempts to use the two generic words air and France has been harassed by the Complainant. Our registration of the disputed domain name and our hope that we will prevail is supported by the Internet community, and those who do not have the power and the resources that the Complainant has, and those who must share their domain names with tens and sometimes hundreds of other companies, and the only alternative the small companies have is to register every suffix and top level extension in order for them to protect their business. For example, there are over 50,000 websites that share the generic two word domain name or domain registration, and it would be a disaster to all of those companies if there was a company named domain.com or domainregistration .com that was granted a trademark for those generic names and the owner of those names has demanded that every company using the generic words domain name or domain registration to Cease and Desist, like they wish to have a monopoly over two very important English words. The most confusing thing here is not the similarity between the disputed domain name and the Complainant’s name, but rather the rights of the Complainant and the rights of thousands of other Internet users.”

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant contends that it has a trade mark, namely AIR FRANCE, and it has produced a US trade mark registration certificate to support that contention. The Respondent claims that the documentation supporting this registration and exhibited to the Complaint has expired. The Complainant asserts and the Panel has no reason to doubt that the registration is undergoing the renewal process. To double-check, the Panel has repeated an exercise undertaken by the Respondent, namely to visit the USPTO website. The search confirmed, as the Respondent must himself have discovered, that the registration is live. The Complainant filed a renewal application on July 28, 2005, and there is nothing to suggest that the renewal will not go through. Indeed, given that the Complainant continues to trade under the AIR FRANCE brand, it would be astonishing if it did not.

At all events, for the moment, the USPTO record establishes that the registration is valid and subsisting.

The Respondent chooses to ignore that registration entirely and concentrates instead on a trade mark application filed by the Complainant for the mark AIR FRANCE in relation to goods in Classes 16 and 17. The Respondent has produced in evidence an Office Action from the USPTO apparently refusing registration of the mark on the grounds that the mark is “primarily geographically descriptive.” The Respondent goes on to develop at length various themes raised in the Office Action and primarily based on the fact that “France” is a dictionary word identifying France, the country of that name, and “Air” which is also a dictionary word said to be descriptive of the Complainant’s business of transportation by air.

In quoting from the USPTO website the Respondent has been selective. It is regrettable that the Respondent did not quote the Current Status of the application, which reads: “a non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made. [Emphasis added]

The Respondent contends that the combination of two wholly descriptive words “Air” and “France” cannot be monopolized by the Complainant.

The Respondent is wrong. In context (in particular in the context of air transportation) the Complainant can have and indeed has been granted exclusive rights in respect of that combination of words.

At best, the Respondent’s argument is a technical one and without merit. AIR FRANCE is a household name in the field of aviation. It is inconceivable that an unauthorized third party could set up in competition under that name and survive an unfair competition/passing off action. Manifestly, therefore, and irrespective of the registered position, the Complainant has unregistered trade mark rights in the name.

The combination of AIR FRANCE and A380 within the Domain Name place the Domain Name firmly within the air transportation context. There can be no question but that the Domain Name and the trade mark, AIR FRANCE, are similar.

Are they confusingly similar? The Respondent says that they are not confusingly similar. The relevant sections of his Response are quoted under “Respondent’s Contentions” above. It seems to the Panel that he relies upon the following:

(i) there is no similarity, let alone confusing similarity

(ii) not all domain names featuring trade marks and other marks are necessarily thought to be domain names of the owners of the principal trade marks because it is common for trade mark owners to permit their trade marks to be used by others operating related services

(iii) only five people appear to have used the Domain Name in a web browser, so any confusion will have been minimal and of no consequence. Indeed, the five visitors were probably the Complainant and its advisers

(iv) there is no evidence of any actual confusion

(v) when the Complainant recovers domain names under the Policy it does nothing with them, with the result that visitors trying to reach a site connected to those domain names end up at an error page.

The Panel accepts the points made in (iii) and (iv), but does not accept (i) and (ii). As to (v), while the visitor might be puzzled, the end result is not an active site of an unauthorised third party.

The Panel finds that there is an obvious similarity between ‘airfrancea380’ and AIR FRANCE. It is now universally accepted by panelists that for the purpose of this comparison it is appropriate to omit the generic domain suffix from the domain name. Moreover, when considering the potential for confusion it is appropriate to take into account the potential for ‘initial interest confusion’. Thus, the appropriate basis for the test is a visual comparison of the domain name with the trade mark.

The Panel refers in this regard to the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, published on the WIPO website, identifying a number of issues in relation to the Policy. The Panel points in particular to the response to question 1.2 (Is the content of a web site relevant in determining confusing similarity?):

“Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark, AIR FRANCE. The adjunct ‘A380’ far from dispelling any likelihood of confusion makes it clear beyond peradventure that the first part of the Domain Name is a reference to the Complainant. The Panel is of the view that Internet users are very likely to believe that such a domain name is a domain name of or authorised by the Complainant. The fact, if it be a fact, that some companies permit third party use of their trade marks in this way, cannot override the undeniable fact that most do not. A mere glance at the decisions under the Policy (all of which are published) will bear this out.

B. Rights or Legitimate Interests

The Respondent claims a right to the Domain Name. No specific basis is given for the claim and the Panel is left to assume that it stems from the fact that the first part of the Domain Name comprises dictionary words claimed by the Respondent to be free for anyone to use and the fact that the Respondent got there first (i.e. was the first to apply to register the Domain Name).

The Panel has already held that the first part of the Domain Name is not free for anyone to use. If mere registration was a means of acquiring a relevant right or legitimate interest for the purpose of paragraph 4(a)(ii) of the Policy, no domain name would be vulnerable to attack under the Policy. Manifestly, therefore, mere registration is not enough.

Nothing that the Respondent has come up with leads the Panel to believe that the Respondent has any right in respect of the Domain Name other than by reason of having been the first to register it.

What about a legitimate interest in respect to the Domain Name? If the Respondent had come forward with an argument that it has used or proposes to use the Domain Name for some purpose consistent with his argument that “Air” and “France” are two purely descriptive words (e.g. a use concerned with some subject associated with atmospheric conditions in France), then the Panel could at least see an argument.

In this case however:

a. the Domain Name features the trade mark A380 which means that the words “AIR FRANCE” can only be a reference to the Complainant; and

b. the nearest that the Respondent has given as a reason for registering the domain name appears in the following extracts from the final paragraph of the Response, namely: “In the past, and at present, and in the future the domain name will remain parked on Itsyourdomain.com’s servers with tens of thousands of other domain names registered through our website …… When the domain name was registered we left it for future generations or legitimate parties to use the domain name to create something beneficial to the world as a whole.”

While the Complainant should no doubt feel gratified at the Respondent’s stated aspirations for the Domain Name, none of that serves to demonstrate a right or legitimate interest in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.

C. Registered and Used in Bad Faith

While the Complainant contends that the Respondent registered the Domain Name for various bad faith reasons, the one that has impressed on the Panel is that in registering the Domain Name the Respondent intended that the Domain Name should attract Internet users to its commercial home page at “www.mydiscountdomains.co”’. In other words, the Respondent selected the Domain Name intending it to refer to both the Complainant and the A380 aircraft which is shortly to be brought into service by the Complainant, hoping and anticipating that the Domain Name would attract visitors to the site to which it is connected.

Assuming in the Respondent’s favor that it was not the Respondent’s intention to sell the Domain Name to the Complainant or a competitor of the Complainant at a profit (paragraph 4(b)(ii) of the Policy) and assuming too that the Respondent’s intention was not to block the Complainant, what possibly can have been the purpose behind the registration if it were not to divert Internet users for commercial gain?

No Internet user entering the Domain Name into a browser can know that in so doing he or she is about to visit the Respondent’s website. He or she will be doing it to reach the Complainant or a site of or associated with the Complainant and the A380 aircraft.

The Panel finds that in selecting the Domain Name, the Respondent intended that Internet users, hoping to reach a website of the Complainant or in some way associated with the Complainant and the A380 aircraft, should be diverted to the Respondent’s commercial website to which the Domain Name is connected.

It will be noted that in making that finding the Panel has rejected the altruistic claims of the Respondent quoted above. Whatever use future generations might have made of the Domain Name, the fact is that at present anyone entering the Domain Name into a web browser will go straight to a commercial website of the Respondent advertising the Respondent’s domain name services. From a document exhibited to the Response and emanating from the Registrar it would appear that the Respondent (in one shape or form) has some 40,000 domain names similarly placed.

That document simply confirms the Panel in his finding as to the Respondent’s intentions. It is plainly a commercial exercise to promote the Respondent’s business.

The Panel strongly suspects that the registration of the Domain Name on the day following the announcement of the launch of the A380 airliner, on January 18, 2005, was not a coincidence.

The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

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 <airfrancea380.com> be transferred to the Complainant.

The Panel notes that the Complainant has informed Airbus Deutschland GMBH (the proprietor of the A380 trade mark) of this Complaint and that that company consented to the filing of the Complaint. Accordingly, it does not object to this result.

Tony Willoughby
Sole Panelist

Date: November 2, 2005