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Société Air France v. Van Wijk & Mesker Holding BV

WIPO Case No. D2002-0028

Outcome
Cancellation
Domain names
airfrance-delta.com, airfrance-delta.net
Complainant
Société Air France
Respondent
Van Wijk & Mesker Holding BV
Panelist
Alain Strowel
Decided
13 Mar 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0028.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Air France v. Van Wijk & Mesker Holding

BV

Case No. D2002-0028

1. The Parties

The Complainant is Société Air France, with registered office

at Roissy CDG, Cedex, France.

The Complainant is represented by Mr. Patrick Meyer, trade mark agent with

Meyer & Partenaires, with offices located at Bureaux Europe - 20, Place

des Halles, 67000 Strasbourg, France.

The Respondent is, according to the Internic WHOIS database, Van Wijk &

Mesker Holding BV, with offices located at Cimburgalaan 82 bis, Breda 4819 bd,

the Netherlands.

The Respondent’s Technical Contact is VeriSign, Inc., with offices at 21355

Ridgetop Circle, Dulles, VA 20166, USA.

2. The Domain Name and Registrar

The disputed domain names are <airfrance-delta.com> and <airfrance-delta.net>.

Network Solutions, Inc., with registered office at 505 Hunter Park Drive, Herndon,

VA 20170-5142, USA, is the Registrar.

3. Procedural History

The procedural stages of the administrative proceeding are the following:

a. The Complainant filed its Complaint in electronic format on January 14,

2002, and by mail on January 16, 2002. This Complaint has been filed against

Van Wijk & Mesker Holding BV (hereinafter: "the Respondent").

The Acknowledgement of Receipt of the WIPO Arbitration and Mediation Center

("WIPO") dates from January 16, 2002.

b. On January 17, 2002, WIPO addressed a Request for Registrar Verification

to Network Solutions, in order to confirm, amongst others, that the specified

domain names are registered with this Registrar and that the Respondent is the

current registrant of the domain names.

c. On January 21, 2002, VeriSign-Network Solutions, Inc., with registered offices

at 505 Hunter Park Drive, Herndon, VA 20170-5142, USA, confirmed that the domain

names had been registered through its services, and that the Respondent is the

current registrant of the disputed domain names. According to VeriSign-Network

Solutions, Inc, the Respondent, in its Registration Agreement, has submitted

to the jurisdiction at the location of the principal office of the Registrar

for court adjudication of disputes concerning or arising from the use of the

domain names.

d. Further to this, on January 22, 2002, WIPO completed a Formal Requirements

Compliance Checklist, confirming that all formalities have been taken into account.

e. On January22, 2002, the Notification of Complaint and Commencement of Administrative

Proceeding was addressed to the Respondent by WIPO.

f. On February 15, 2002, WIPO transmitted notification to Respondent of its

default in responding to the Complaint addressed on January 22, 2002. On February 15, 2002,

WIPO received the following message from Respondent, in the name of Mr. Ruud

Mesker:

"there is no dispute"

g. On February 19, 2002, WIPO transmitted Respondent’s e-mail of February 15, 2002

to Complainant per e-mail, and requested Complainant to clarify whether it wished

the proceeding to be terminated.

h. On February 20, 2002, Complainant acknowledged receipt of WIPO’s e-mail,

per facsimile and per e-mail, and informed WIPO that the dispute between Complainant

and Respondent has not been settled. Complainant also requested WIPO to continue

the proceedings.

i. On February 20, 2002, WIPO responded to Complainant’s e-mail of February 20, 2002,

holding that WIPO will proceed with the case. The message from WIPO was also

communicated to Respondent, who responded on the same day with the following

e-mail message:

"you better make it easy to transfer".

j. On February 26, 2002, the undersigned transmitted the Statement of Acceptance

and Declaration of Impartiality and Independence to WIPO.

On February 27, 2002, the notification of Appointment of Administrative Panel

was sent to both Complainant and Respondent. WIPO notified the Panel that, absent

exceptional circumstances, the date scheduled for the Panel to render a decision,

is March 13, 2002.

k. The Panel has not received any requests from Complainant or Respondent regarding

further submissions and the Panel has not found it necessary to request any

further information from the parties.

l. The proceeding has been conducted in English.

4. Factual Background

- The Complainant has submitted copies holding an overview of the trademark

portfolio regarding the trademark "AIR FRANCE" (Exhibits I.1-7).

The aforementioned trademarks are registered for different classes of goods

and services in a variety of countries, such as France, Germany, Austria, China,

the Benelux, Spain, the Russian Federation, Italy, etc. More specifically, the

trademark "AIR FRANCE" was respectively registered on February 18,

2000 in France (Exhibit I 3) and on February 22, 1996 in the other countries,

such as the Benelux countries, following an international registration (Exhibit

I 5).

- Complainant states that these trademarks are valid. The validity of Complainant’s

trademark registration for "AIR FRANCE" has not been contested by

Respondent, and the Panel accepts as an undisputed fact that Complainant is

the holder of valid trademark registrations for "AIR FRANCE".

- Furthermore, Complainant argues that the name "AIR FRANCE" has

been used by Complainant as a trade name since 1933, and is a well-known and

famous trade mark. Finally, Complainant also uses the domain names <airfrance.com>,

<airfrance.fr> and <airfrance.nl> (See Exhibit G).

- The disputed domain names were registered on October 19, 1999, and renewed

on October 3, 2001, by Respondent. According to the Registrar, Respondent is

the registered owner and the Administrative Contact of the disputed domain names.

- After having discovered that (part of) "AIR FRANCE" was registered

as domain names in the ".com" and ".net" gTLDs, the Complainant

sent a proof of default by registered mail and e-mail, via its representative,

to Respondent on September 6, 2001. A Copy of this proof of default,

sent by Complainant’s representative, is submitted to the Panel as Exhibit

K1.

- On September 6, 2001, the Respondent replied to the aforementioned registered

letter by e-mail, and holds the following:

"sorry, but this is not the way to ask us to do something. please come

with a better idea. we are pointing to nothing and we can keep this if we want

without a problem. you know that. we have not offered you this or someone else.

rudi mesker."

- Presently, the disputed domain names are not used, and a message holding

"still under construction" is displayed upon access of the

web-site(s).

- Registrar confirms, in its e-mail of January 21, 2002, that the Policy approved

by ICANN on October 24, 1999, applies to the disputed domain name. This Policy

requires that domain name registrants submit to a mandatory administrative proceeding

by an approved dispute resolution service provider, such as WIPO. Respondent

has not contested that it is properly before the Administrative Panel.

5. Parties’ Contentions

A. Complainant

Complainant’s representative states that Complainant is one of the world’s

most important airline companies, that has entered into a strategic alliance

with, amongst others, Delta Airlines, a major US airline company. Complainant

is the holder of a famous trademark registered worldwide for different classes

of goods and services. More specifically, Complainant states that it holds the

rights to:

- "AIR FRANCE", French nominative trademark n° 1 703 113 of October 31, 1991

(on renewal) for all classes of 1957 Nice Agreement (Exhibit I.2);

- "AIR FRANCE", French nominative trademark n° 99 811 269 of October 6, 1999,

in 32 classes of Nice Agreement and especially in class 38 for Internet services

(Exhibit I.3);

- "AIR FRANCE" nominative trademark registered in the United States on August 2,

1955, under n° 0610072 (Exhibit I.4);

- an International figurative trademark registration "AIR FRANCE + stripy device"

n° 649075 in January 5, 1996; (Exhibit I.5);

- A Benelux figurative trademark registration "AIR FRANCE + winged horse" n° 158

674 in December 30, 1987, with first use in 1933; (Exhibit I.6); and

- A Benelux figurative trademark registration "AIR FRANCE + stripy device"

n° 061415 in December 30, 1987, with first use in 1976. (Exhibit I.7)

The Complainant further holds that the disputed domain names, registered by

Respondent, are confusingly similar to the trade mark of Complainant. Complainant

argues that its trade mark is a well-known and famous mark, and submits a judgment

of the Tribunal de Grande Instance de Paris wherein such Court held that "AIR

FRANCE" is a famous and well-known trade mark.

Complainant further argues that Respondent has no legitimate interest to use

the disputed domain names, because:

- Respondent has not and is not known under the name "AIR FRANCE",

"DELTA" or a combination of both names;

- Respondent is not active in the airline business;

- Respondent never received authorization from Complainant to register and/or

use the domain names; and

- Respondent has never used the domain names.

Complainant supports the view that, by registering the disputed domain names,

such registrations were performed in bad faith. More specifically, the Complainant

argues that this bad faith behavior can be deduced from the fact that:

- The trademark held by Complainant is world famous;

- Respondent operates in the area of tourism and traveling;

- Respondent thus was or must have been aware of Complainant’s engagement with

Delta Airlines;

- Respondent refused to co-operate after having received a proof of default

from Complainant on September 6, 2001 (Exhibits K1 and K2);

- Respondent’s "passive" behavior regarding the domain names, constitutes

bad faith behavior.

Complainant requests that the domain names <airfrance-delta.com> and

<airfrance-delta.net> be cancelled.

B. Respondent

The Respondent only replied, on September 6, 2001, to Complainant’s contentions

held in its registered letter of the same date, by stating the following:

"sorry, but this is not the way to ask us to do something. please come

with a better idea. we are pointing to nothing and we can keep this if we want

without a problem. you know that. we have not offered you this or someone else.

rudi mesker."

Furthermore, Respondent responded to WIPO’s e-mail of February 20, 2002, holding

that WIPO will proceed with the case, with the following e-mail message:

"you better make it easy to transfer".

6. Discussion and Findings

Paragraph 4(a) of the Policy distinguishes three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief.

These elements are that:

"(i) Respondent’s domain name is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith."

It is essential that the dispute resolution proceedings respect the due process

requirements. That means that Respondent must have received adequate notice

of proceedings initiated against it, and a reasonable opportunity to respond.

In the present case, the Panel considers that WIPO took all the necessary steps

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings.

The Respondent has defaulted in providing an adequate response to the allegations

of Complainant, and that allows the Panel to draw some conclusions on the basis

of Complainant’s undisputed allegations.

(i) The Complainant is the owner of the trademark "AIR FRANCE", which

clearly follows from the exhibits I.1-7 submitted to the Panel. Further, the

Panel is of the opinion that this trademark is a famous trademark.

The domain names registered by Respondent contain an element, which is identical

to Complainant’s registered trademark, to which a generic top-level domain name

".com" and the word "DELTA" are added. This addition does

not eliminate any risk of confusion with the trademark of Complainant, but on

the contrary suggests that this domain name refers to the French airline company.

This risk of confusion is enhanced by the combination with the name "DELTA",

which undoubtedly refers to the airline company Delta Airlines with which Complainant

has a partnership.

In earlier WIPO decisions on such an adjunction of names, Panelists discouraged

"opportunistic combinations of two famous trade marks, registered shortly

after a merger announcement" [1].

Furthermore, the Panel decided in the case of <vivendiseagram.com> and

<vivendiuniversal.com> that "Each of the disputed domain names

incorporates in full the "Vivendi" mark, in combination with either

the "Universal" or "Seagram" marks and, thus, are confusingly

similar to the Complainant’s marks." [2]

(see also the <chevron-texaco.com> case [3]).

Complainant therefore met the burden of proving that Respondent is the registrant

of domain names that are identical or confusingly similar to the trademarks

owned by Complainant.

(ii) There is no evidence on the record that indicates that Respondent has

any rights or legitimate interests in the disputed domain names. Indeed the

Respondent only registered the domain names and does/did not actually use these

domain names. Hence, a bona fide offering of goods and services could

not be established.

Furthermore, Respondent is not commonly known as an individual, business or

organization by the domain names.

Finally, Respondent is not making a legitimate commercial or fair use of the

domain names, because it can mislead consumers by offering on-line travel ticketing,

without having acquired any license or permission from Complainant, which is

the legitimate owner of the trade mark "AIR FRANCE".

The Respondent has not engaged in any action that shows it has a legitimate

interest.

In light of the aforementioned, the Panel decides that the Respondent has no

rights or legitimate interests in the disputed domain names.

(iii) Considering the third element, the registration and use in bad faith,

the Policy indicates that certain circumstances may, "in particular

but without limitation", be evidence of bad faith (paragraph 4(b)).

For example, a person or entity who registered the domain name in order to prevent

the owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, commits bad faith registration, provided he/it engaged in a pattern

of such conduct, in accordance with Paragraph 4 (b)(ii) of the Policy. Furthermore,

a domain name registration is also registered in bad faith, if the registrant

registered such domain name primarily for the purpose of disrupting the business

of a competitor, in accordance with Paragraph 4(b)(iii). Finally, the use of

a domain name to intentionally attempt to attract, for commercial gain, Internet

users to its web site 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 its web site or location or of a product or service on its

web site or location, is considered use in bad faith.

In response to Complainant’s request to cease the use of its registered trademark

"AIR FRANCE", sent by registered letter and e-mail on September 6,

2001, Respondent states "… please come with a better idea.".

Although this answer is unclear, if not confusing, it might be interpreted as

suggesting that Complainant should make an offer to pay for the transfer of

the domain names. Besides, it can be deduced from the absence of any justification

for the registration of the domain names, that Respondent has thus registered

and used the domain names in bad faith.

Additionally, a Panel already decided in <guinessbeer.com> [4]

that the notoriety of a Complainant’s mark 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. Though the domain name does

not presently resolve to a website this is a case where the concept of passive

use referred to in the Telstra-case WIPO Case

No. D2000-0003 is applicable."

Therefore, the Panel finds that Respondent has registered and used the disputed

domain names in bad faith.

The Complainant thus established the three elements necessary to conclude that

Respondent has engaged in abusive domain name registration.

7. Decision

Based on its findings that the Respondent has engaged in an abusive registration

of the domain names <airfrance-delta.com> and <airfrance-delta.net>

within the meaning of Paragraph 4(a) of the Policy, the Panel directs the Registar

to cancel the domain names.

Alain Strowel

Sole Panelist

Dated: March 13, 2002

Footnotes:

1. WIPO

Case No. D2000-0717 Vivendi SA/Seagram Company Ltd./Universal Studio

Inc v. Yu Fu Zhao; WIPO Case No. D2000-0446

Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc.

2. See WIPO

Case No. D2000-0717 Vivendi SA/Seagram Company Ltd/Universal Studio Inc

v. Yu Fu Zhao.

3. WIPO

Case No. D2001-1142 Chevron Corporation v. Young Wook Kim.

4. WIPO

Case No. D2001-0020 "Arthur Guinness Son & Co. (Dublin) Ltd.

v. Steel Vertigogo", regarding <guinessbeer.com>

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