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Société Air France v. Domain Active Pty Ltd. [2005] GENDND 39 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Domain Active Pty Ltd.

Case No. D2004-0993

1. The Parties

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

The Respondent is Domain Active Pty Ltd., Clayfield, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <airfrancereservations.com> is registered with Fabulous.Com Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2004. On November 26, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November 29, 2004, Fabulous.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 December 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2004.

The Center appointed Dimitris Oekonomidis as the Sole Panelist in this matter on January 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 major airline companies in the world, based in France.

AIR FRANCE is the trademark owned by the Complainant and used worldwide in trade. The Complainant is the registered owner of a number of trademarks either consisting or including the words AIR FRANCE.

The Complainant has registered as being its property: “AIR FRANCE”, Australian nominative trademark n°828334 registered on October 10, 2003, for classes 16,35,38,39 (see ANNEX G1) and “AIR FRANCE + device”, Australian semi-figurative trademark n°673539 registered on September 26, 1995, for class 39 (see ANNEX G2).

The trademark “AIR FRANCE” is also well established and known throughout the world as such.

The Complainant operates an international web portal at “http://www.airfrance.com” (see ANNEX C), while it has also registered the domain name <airfrance.com.au> that activates its Australian website (see ANNEX D). This domain name has been registered in Australia since November 16, 2002 (see ANNEX E1).

The Complainant allows consumers to book online flight tickets to travel all around the world through its different websites. Internet users can reserve a seat on any flight from home and even pay for the ticket directly through the Complainant’s websites.

Moreover, regarding the Australian market, the Complainant has established reservation offices in Sydney, Melbourne, Brisbane, Perth and Adelaide (see ANNEX E2).

The domain name in dispute was registered on June 7, 2004 (see ANNEX A).

The Respondent is a company based in Queensland, Australia. On its website “domainactive.com”, is stated that it owns over 120,000 domain names and that it makes its revenue by selling websites which they have developed and domain names which are not yet developed. They also make profits by selling various products and promoting other companies on their websites (see ANNEX F).

5. Parties’ Contentions

A. Complainant

The Complainant claims that the domain name <airfrancereservations.com> is confusingly similar to its trademark.

It contends that the trademark AIR FRANCE is entirely reproduced into the domain name in dispute, while the combination of the complainant’s trademark AIR FRANCE with the generic word “reservations”, which means “the act or an instance of reserving” both in French and English (see ANNEX H), does not eliminate the risk of confusion with the complainant’s well-known trademark AIR FRANCE, which is the only distinctive element of the domain name in dispute. On the contrary, according to the Complainant, this combination suggests that the domain name <airfrancereservations.com> refers to the French airline company since the word <reservations> is commonly used in relation with airline companies because of the obligation to book, to reserve a place to be able to travel by plane. The Complainant maintains that as a consequence, the consumer that goes on the website with domain name at issue will be confused because he will think without any doubt that the Complainant offers a reservation service online via “www.airfrancereservations.com”.

Further the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name in dispute since the latter is not currently and has never been known under the wording AIR FRANCE, or under the combination of this trademark with the generic term “reservations”.

The Complainant states that it does not know the Respondent before this latter acquired the domain name <airfrancereservations.com> and confirms that the Respondent is not related to its business, in any way whatsoever, and that the Respondent is not one of its agents and does not carry out any business with the Complainant.

The Complainant states that it has never given any agreement or authorization to the Respondent to use its trademark or to acquire domain name on its behalf.

According to the Complainant the domain name at issue has been registered by the Respondent in order for the latter to take advantage of the Complainant’s well-known trademark, to confuse and divert Internet users to “www.airfrancereservations.com”. Such use, though, 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).

The Complainant claims that the Respondent has registered and is using the domain name <airfrancereservations.com> in bad faith.

According to the Complainant, taking into consideration that the Respondent purporting on its website to own over 120,000 domain names, is therefore specialised in trading domain names or “developed” websites to potential customers making its profits, the registration of the domain name in dispute has been made in order to re-sell it or to take advantage of the notoriety of the Complainant. The Complainant asserts that <airfrancereservations.com> cannot be considered as a developed website as it links to other websites in direct competition with the Complainant. On the website with domain name <airfrancereservations.com>, no hyperlink leads to the Complainant’s websites whatsoever (<airfrance.com.au> or <airfrance.com> for instance). The creation of a likelihood of confusion between AIR FRANCE and <airfrancereservations.com> has been made intentionally to take advantage of the well-known character and strong reputation of the Complainant’s trademark in order to get some profits through cybersquatting.

The Complainant contends that the fact that the Respondent asserts to be specialised in domain names can be construed in the sense that the Respondent should have been aware that trademark law would protect the trademark AIR FRANCE worldwide and especially in Australia. Moreover, on its website, the Respondent asserts that they “make extensive efforts to ensure that the domain names (they) purchase are not trademarked or are an infringement of any kind”. From that point of view, an “extensive” effort would have certainly led the Respondent to the conclusion that <airfrancereservations.com> might be in dispute because of trademark law. Still, on its website, the Respondent confirms that they “are not interested in adult, trademark, copyright, typo or illicit domains”. The Complainant maintains that this statement is not true as the Respondent is a well-known cybersquatter even for famous trademarked adult websites. (See WIPO Cases: WIPO Case No. D2004-0459, and WIPO Case No. D2002-1156).

According to the Complainant, taking into account the fact that the Respondent has already been before the WIPO Arbitration and Mediation Center for similar bad faith pattern of conduct, it is obvious that the Respondent was aware of the need for registration to be in bona fide. Nor does the Respondent appear to be a naive website operator concerning intellectual property rights. Its own website “www.domainactive.com” website includes trademark and copyright notices.

Furthermore, the Complainant mentions that it has several reservations offices in Australia and especially one in Queensland, which is the location where the Respondent has his office.

The Complainant claims that the Respondent’s only purpose for using this specific domain name is cybersquatting. The aim in using <airfrancereservations.com> is to trade on a famous name owned by the Complainant and divert consumers to other websites for its own commercial gain.

The Complainant states that <airfrancereservations.com> leads to sponsored links (see ANNEX J) such as:

- <Ebookers.fr>: this hyperlink is written in French and the code extension is “.fr”: these facts according to the Complainant prove that the Respondent seeks to divert French speaking consumers from Société AIR FRANCE to its sponsored link “ebookers.fr”. It is likely that using <airfrancereservations.com> attracts consumers to other airline companies to the detriment of the Complainant.

- <Money-off.co.uk>: this sponsored link in English points to a website where “flights huge saving searchable database” is operating.

According to the Complainant, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s sponsored links, by creating a likelihood of confusion with the Complainant’s mark AIR FRANCE as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a service on the Respondent’s website or location.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to 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 and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances which indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

A. Identical or Confusingly Similar

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(i))

The domain name at issue is confusingly similar to the trademark AIR FRANCE, in which the Complainant has rights.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Since the adoption and extensive use by the Complainant of the trademark AIR FRANCE predate the first entry of <airfrancereservations.com > as domain name and because Complainant has made a prima facie under this element, the burden is on the Respondent to show any rights or legitimate interests it may have in the domain name.

A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.

In this case, the Respondent neither has been authorized by the Complainant nor has independent rights to use the AIR FRANCE name or to register the domain name at issue. The Respondent does not own any registered or common law marks containing the term “airfrancereservations”. The Respondent has not conducted any prior business under the name AIRFRANCERESERVATIONS in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. The Respondent is not making any legitimate non-commercial or fair use of the contested domain name. The objective of the registration appears to have been to profit from the name by selling it, or to take advantage of the Complainant’s well-known trademark, to confuse and divert Internet users to the Respondent’s website or other sponsored links for commercial gain and to the detriment of the Complainant

All the above support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))

To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.

A finding that a Respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a Complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.

The context of the registration and the use of the subject domain name by the Respondent, taking into consideration the strong fame and wide-spread use of the Complainant’s mark, and the business activities and past bad faith of Respondent, are facts which constitute evidence from which an inference of bad faith may be made. The Respondent has done nothing to rebut that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the contested domain name <airfrancereservations.com> be transferred to it. The Administrative Panel so orders.

Dimitris Oekonomidis
Sole Panelist

Dated: January 24, 2005