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Societé Air France v. Virtual Dates, Inc [2005] GENDND 765 (24 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Societé Air France v. Virtual Dates, Inc

Case No. D2005-0168

1. The Parties

The Complainant is Societé Air France, Roissy CDG Cedex, France, represented by Meyer & Partenaires, France.

The Respondent is Virtual Dates, Inc, Boynton Beach, Florida, United States of America, represented by Law Office of Howard M. Neu, PA, United States of America.

2. The Domain Name and Registrar

The disputed domain name <airfrancesucks.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2005. On February 11, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On the same date, Moniker Online Services, LLC 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 March 4, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response March 24, 2005. The Response was filed with the Center March 24, 2005.

The Center appointed Knud Wallberg, Christian-André Le Stanc and Jeffrey M. Samuels as panelists in this matter on May 13, 2005. The Panel finds that it was properly constituted. Each member of 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. In that respect the Panel notes the correspondence between the Center and Respondent that took place before the appointment of the Panel.

The Complainant filed a Supplemental Filing with the Center on May 20, 2005. The Center notified the Complainant on May 24, 2005, of the principles on Supplemental Filings in the Policy and the Rules and forwarded this information together with the Supplemental Filing to the Panel and the Respondent. According to the Rules Paragraph 12 it is in the sole discretion of the Panel whether to allow such material. The Panel has considered the matter and has, due to the late date of the filing and due to the content of the same, decided not to allow the Supplemental Filing.

4. Factual Background

The Complainant is an airline passenger and freight carrier company established under the laws of France in 1933 and operating internationally, with approximately 42 million passengers per year, and a turnover of over EUR 12.6 billion.

The Complainant operates under the names “Air France” and holds trademark registrations of AIR FRANCE in many jurisdictions around the world inter alia in France and the United States of America.

Respondent is in the business of warehousing and utilizing domains primarily of a generic nature.

The disputed domain name is, at the time of this decision, live but redirects and resolves to a portal which to the knowledge of the Panel has no association to any of the parties.

5. Parties’ Contentions

A. Complainant

The factual and legal contentions made by the Complainant can be summarized as follows:

The contested domain name is confusingly similar to Complainants well-known trade mark AIR FRANCE, which is registered and used world wide including in the place of residence of the Respondent, the United States of America. The addition of the suffix “sucks” does not alter this, as has been established in several decisions under the UDRP to which reference was made in the Complaint. In that context the Complainant pointed out that since not all Internet users are familiar with the English language and thus with the meaning of the word sucks.

The Respondent has no rights or legitimate interests in the contested domain name. The Respondent is not related in any way to Complainant or Complainants business, nor has it been commonly known under the name “air france” or “airfrancesucks”.

The Complainant respects the freedom of speech and that genuine non-commercial interest may exist, but this is not such a case. The contested domain name was at the time of the Complaint used to divert Internet users to a website containing several hyperlinks to other pages that allegedly had to do with tourisms and travel. However, the hyperlinks referred to other commercial websites some of which were “pay-per-click” sites that may have generated revenue to the Respondent.

Further the domain name is registered and used in bad faith. AIR FRANCE is an internationally reputed mark including in the USA, and it is inconceivable that the Respondent did not know of this when it registered the domain name. The addition of the suffix “sucks” is also a clear indication of this. As explained above the domain name was at the time of filing of the Complaint used actively to redirect Internet users to other commercially based websites and was thus also clearly used in bad faith.

In support of the above claims and arguments the Complainant has made several references to previous UDRP decisions.

B. Respondent

The Respondent has provided the Panel with the following information:

Respondent originally registered the domain <airfrancesucks.com> on February 23, 1999, and has utilized the domain name since that date as a freedom of expression site where visitors can register their complaints (and recommendations) about their experiences flying upon and dealing with Air France.

For a very short period of time, (approximately 2 to 3 weeks) the web site was mistakenly redirected to a Pay-Per-Click Provider while the web site was being updated. The web shots provided by Complainant were taken during that period of time. However, the web site presently and for the last six years has been a comments site directed to “www.epinions.com”.

Respondent has never been commonly known as Air France, nor has Respondent obtained any license from the Complainant to use the words “Air France”. However, the use of the suffix “sucks” attached to a domain name has become a universal standard pejorative for Internet sites protesting the business practices of a company. It is also worth noting that Respondent has used the domain as the web site appears today for over six years without causing any confusion with the Complainant’s web sites or trademarks.

Respondent did not register the domain name in question for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or a competitor of the Complainant, nor has it done so.

Respondent did not register the domain name in question in order to prevent the owner of the subject trademark from reflecting the mark in a corresponding domain name, nor has it done so.

Respondent did not register the domain name for the purpose of disrupting the business of a competitor, nor is it a competitor of the Complainant. Respondent does not use the domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site, by creating confusion, using the Complainant’s mark.

The disputed Domain Name is being used as a free speech web site. A web site that functions for the exercise of free speech by its nature cannot operate with bad faith intent. Further, it is not “confusingly similar”. Internet users would not confuse Respondent’s domain name with Complainant’s mark because the addition of the term “sucks” indicates that the disputed domain name has no affiliation with Complainant’s mark. See Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015, finding that “common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore <lockheedmartinsucks.com> and <lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED MARTIN.

Complainant is required pursuant to Paragraph 4(a) of the Policy to prove each of the following three elements

- That the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

- That the domain holder has no “rights or legitimate interest in respect to the domain name” and

- That the domain “has been registered and is being used in bad faith”.

Previous administrative panels have further held that as to requirement 3, is required to prove not only that the domain name has been registered in bad faith, but that it is also being used in bad faith.

Respondent has “rights or a legitimate interest in respect to the domain name” in that it has been used as a free speech site and that the name <airfrancesucks.com> is appropriate to its use. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005.

The fact that some other domain names registered by the Respondent may be identical to trademarks owned by others is, in itself, insufficient evidence of the intent to profit from or otherwise abuse such trademark rights.

Finally, there is no evidence in the Complaint or in the attachments thereto that Respondent engages in a pattern of registering the trademarks of others as domain names. Nor can the Complainant show that Respondent intentionally attempted to create a likelihood of confusion with Complainants’ mark. See Avnet, Inc., v. Aviation Network, Inc., WIPO Case No. D2000-0046, and Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Complainant bases its argument that Respondent is using the domain in “bad faith” on the web shots that it took of the web site during the 2 or 3 week period of time that it was mistakenly directed to a Pay-Per-Click Provider. Respondent argues that even though previous panels have held that the web site content is irrelevant to the issue of “bad faith use” A. T. & T. Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, Complainant’s entire Complaint is based upon the content of the web site as it appeared for a short period of time and purposely ignored the protest free-speech site that it has been for years and continues to utilize.

Thus, Complainant has been unable to prove any of the Policy requirements necessary to obtain a transfer of the subject domain name.

6. Discussion and Findings

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis 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.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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.

The majority of the Panel finds the following:

A. Identical or Confusingly Similar

In this case the contested domain name consist of the well known trademark AIR FRANCE and the addition of the generic term “sucks”. The incorporation of a well known trademark in its entirety as the first and dominant part of a domain name is confusingly similar to this trademark regardless of whether the additional elements are pejorative as in this case or of a more neutral kind such as “airfrancetickets”. In this context the Panel explicitly wants to stress that the standard for finding confusingly similarity under the first element of the Policy, which is a rule specifically designed to address cybersquatting, is not the same standard as for finding trademark infringement.

The Panel is fully aware that there is a split among the UDRP decisions regarding whether a “-sucks” domain name is confusingly similar to the trademark to which it is appended. The majority of the decisions have found confusing similarity. In a minority of decisions, and in some dissenting opinions, Panelists have deemed a “-sucks” addition to a well-known trademark to be an obvious indication that the domain name is not affiliated with that trademark owner. This Panel, however, concurs with the notion that every case must be assessed on its own merits, and the Panel agrees with the remarks by the Complainant, and which has also been stated in previous decisions under the UDRP, that far from all international customers are familiar with the pejorative nature of the term “sucks”, and that a large proportion of internet users therefore are likely to be confused by “-sucks” domain names. See inter alia Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-00596.

This Panel finds that the <airfrancesucks.com>, domain name is confusingly similar to the established international trademark AIR FRANCE. Accordingly, the Panel finds that Policy Paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Panel recognises that there may be situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes.

In this case however, Respondent is not a dissatisfied customer, a dissatisfied employee or an organisation representing such interests. Respondent is a commercial entity who has put forward no prima facie legitimate reasoning for the registration. Further, the domain name was at the time of filing of the Complaint used to redirect to a Pay-Per- Click Provider. The Respondent claims that this was done “mistakenly” and only lasted for 2-3 weeks. First of all it does not sound probable that such redirection can happen by “mistake”. Secondly a search in the archive.org files reveals that at least for the whole year 2004, the domain name appears to have been used in the same manner. The fact that the domain name previous to 2004 and now, i.e. after the filing of the Complaint, points at the website “www.epinions.com”, does not provide Respondent with a legitimate right or interest in the domain name. The holder of the “www.epinion.com” website has according to the information presented to the Panel no association to either party in this proceeding.

Accordingly, the Panel finds that Policy Paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

The Complainant has claimed, and the Respondent has not rebutted this claim, that Respondent knew of the Complainant’s business and its rights in the registered trademark AIR FRANCE when it registered the contested domain name.

It also seems apparent from the above findings that Respondent registered and has used the domain name to disrupt Complainant’s business. It disrupted Complainant’s business by redirecting traffic to what appeared to be competitive products and services, and thereby confusing Complainant’s customers whether satisfied or dissatisfied. Further, Respondent has obtained or at least expected to obtain some commercial gain, either by selling links to Complainant’s competitors, selling advertising space, or by through the “pay per click” being paid to stop using the derogatory domain names.

In addition, the Respondent has itself informed the Panel that it is engaged in the business of warehousing of domain names. While this can be a perfectly legitimate business if the domain names are of purely generic or descriptive nature, registering domain names incorporating the trademarks of others is an indication of bad faith under the UDRP, cf. Policy Paragraph 4(b)(ii).

All circumstances taken together, this Panel finds that the Respondent registered and used the domain names in bad faith and, accordingly, that Policy Paragraph 4(a)(iii) has been satisfied.

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 <airfrancesucks.com> be transferred to the Complainant.

Knud Wallberg
Presiding Panelist

Christian-André Le Stanc
Panelist

Dated: May 24, 2005

DISSENT

I respectfully dissent from the decision of the majority of the Panel.

In my opinion, the disputed domain name <airfrancesucks.com> is not confusingly similar to Complainant’s AIR FRANCE mark. The domain name and mark do not look or sound alike and certainly do not convey the same commercial impression. See, e.g., FMR Corp. v. Native American WarriorSociety, Lamar Sneed, WIPO Case No. D2004-0978 (<fidelity-brokerageinvestmentsfraud.com> and <fidelityinvestmenttheft.com> not confusingly similar to FIDELITY and FIDELITY INVESTMENTS marks); Wal-Mart Stores, Inc .v. walmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104. In this regard, there is a big difference between the domain name <airfrancesucks.com> and <airfrancetickets.com>. While both incorporate Complainant’s mark in its entirety, the term “tickets,” in context, is generic in nature and, thus, insufficient to distinguish between the domain name and the mark. The term “sucks,” on the other hand, is clearly pejorative in nature and, thus, at least in my view, sufficient to avoid a determination of confusing similarity. To paraphrase the decision of one U.S. court, no reasonably prudent internet user would believe that <airfrancesucks.com> is the official Air France site or is sponsored by Air France. See Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Calif. 1998) (<ballysucks.com> not confusingly similar to BALLY mark).

While the majority notes that not all international customers are familiar with the pejorative nature of the term “sucks,” it is likely that a substantial percentage of potential customers of Air France are familiar with the English language and, thus, would be aware of the pejorative nature of “sucks.”

Finally on this issue, I note that a recent UDRP panel held that “[t]hough there are some decisions to the contrary, the weight of authority, and the clear trend of recent cases, firmly support the position [that adding a pejorative term to a trademark or service mark dispels the likelihood of confusion].” See, FMR Corp. v. Native American Warrior Society, supra.

Jeffrey M. Samuels
Panelist

Dated: May 24, 2005