Nominet UK Dispute Resolution Service

DRS 03887

Société Air France v Rob Langton

Decision of Independent Expert

1.	Parties

Complainant:		Société Air France
Country:		FR

Respondent:		Rob Langton
Country:		GB

2.	Domain Name

wwwairfrance.co.uk (“the Domain Name”)

3.	Procedural Background

The complaint was entered into Nominet’s system on 1st August 2006.  Nominet validated the complaint and informed the Respondent by letter dated 4th August 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 29th August 2006 to submit a Response. No Response was received.

On 30th August 2006 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 (“the Policy”). The fee was duly paid on 13th September 2006.

On 13th September 2006 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 20th September 2006.

4.	Outstanding Formal/Procedural Issues

None.

5.	The Facts

Société Air France is a French airline of international repute. It has traded under and by reference to the trade mark “AIR FRANCE” since 1933, principally in France but also internationally, including in the United Kingdom.

It owns a large portfolio of trade mark registrations for the mark ‘AIR FRANCE’ including CTM no. 2528461 (registered as of 9 January 2002), CTM no. 4422481 (registered as of 4 May 2005) and UK registration nos. 1137847 and 1137847 (both registered as of 28 July 1980); infringement of each of which would be actionable in the UK.

The Nominet WHOIS search with which I have been provided indicates that the Respondent registered the Domain Name on 13th February 2003.

The Respondent’s use of the Domain Name has been in two phases. Each time the URL http://wwwairfrance.co.uk was used as a commission-generating conduit through to the Complainant’s site at www.airfrance.co.uk; the only difference between the phases was that initially it was via a click-through ‘Air France’ banner, and latterly it passes traffic directly through to the Complainant’s site. This explains why the print-out of the Respondent’s site with which I have been provided by Nominet is actually – somewhat confusingly at first – a print-out of the Complainant’s site.

6.	The Parties’ Contentions

Complaint

The Complainant makes the following submissions in its Complaint:

“Société Air France (the Complainant) is filling this complaint against Rob Langton (the Respondent) alleging on abusive registration and use of the domain name WWWAIRFRANCE.CO.UK and seeks the transfer of this domain.

Société Air France is one of the world's major airline companies, tracing its origins back to 1933. Thanks to its network of regional airlines, Société Air France has [Annex A] :

•	71,600 employees;
•	383 aircrafts in operation as of March 2006;
•	1,800 daily flights;
•	185 destinations in 83 countries;

Société Air France has developed a wide communication through television, radio and printed media on the one hand, online advertising, promotions and incentive programs on the other hand. Société Air France is operating an international web portal under the Uniform Resource Locator http://www.airfrance.com [Annex B].

It also registered several generic and country code top level domain names consisting of or incorporating the trademark AIR FRANCE. See for instance: 

http://www.airfrance.fr
http://www.airfrance.de
http://www.airfrance.ir
http://www.airfrance.es
http://www.airfrance.pt
http://www.airfrance.it

…… More particularly, the domain names AIRFRANCE.CO.UK (http://www.airfrance.co.uk) and AIRFRANCE.ORG.UK are registered by société Air France since March 25, 1998 and May 15, 2003. These domain names activate société Air France' s local website dedicated to United Kingdom [Annex C].

Société Air France is also physically established in the UK through many subsidiaries [Annex D].

Société Air France is the registered owner of the trademarks AIR FRANCE, widely protected under the law of France, and a great majority of other countries around the world, including United Kingdom.

On August 4, 2003, Société Air France was informed that a person named Rob Langton apparently located in United Kingdom had registered on February 13, 2003 the domain name WWWAIRFRANCE.CO.UK. The renewal date for this domain name was February 13, 2005 [Annex E]. At this time, the domain name was pointing to the Url http://www.cardconnect.co.uk/travel/airfrance where internet users could find a blank webpage with only an Air France’s banner [Annex F] pointing to the Complainant’s website dedicated to United Kingdom at http://www.airfrance.co.uk.

Through its investigations, the Complainant founds out that this redirection was the result of Air France’s UK affiliation program that had been subscribed by the Respondent through Tradedoubler.com. Since then, société Air France moved its affiliation program from Tradedoubler.com to Commission Junction [Annex G].

Société Air France first tried to settle the matter amicably, by sending a cease and desist letter through its trademark attorneys to the Respondent on September 29, 2003 [Annex H1], after having obtained the Respondent’s address at NOMINET [Annex H2]. Despite M. Langton received said cease and desist letter [Annex H3], he never replied. The Complainant sent a reminder letter to the Respondent on January 19, 2004 [Annex H4]. Another time, no reply has been received. On February 2005, and despite the Respondent’s knowledge of the Complainant’s claims, he renewed the domain name WWWAIRFRANCE.CO.UK for a further two years period [AnnexI]. The Complainant also noticed a modification regarding WWWAIRFRANCE.CO.UK’s activity: the domain name points to the Complainant’s UK website through the affiliation program without any previous banner to click. The process is now completely transparent. The activity did not changed anymore from this time.

Before filling this Complaint, société Air France tried a last time to settle the matter in an amicable way by sending a formal letter to the Respondent on May 5, 2006 [Annex J]. Having received no answer to this letter and without any modification of status or activity regarding this domain, société Air France decided to fill this Complaint.

1. Rights

Société Air France alleges that the domain name WWWAIRFRANCE.CO.UK in dispute is similar to its business name and famous trademark in which the Complainant has exclusive rights. AIR FRANCE is the trade name of the Complainant, used in commerce since 1933. The Complainant is the registered owner of a large number of trademarks consisting or including the wording "AIR FRANCE" in a great majority of countries in the world, including United Kingdom where Rob Langton is supposed to be established:
•“AIR FRANCE” British nominative trademark n° 1137848 of July 28, 1981 in class 16 of Nice Agreement [Annex K1 ];
•“AIR FRANCE” British nominative trademark n° 1137847 of July 28, 1981 in class 12 of Nice Agreement [Annex K2 ];
•“AIR FRANCE” British semi-figurative trademark n° 1289050 of October 1st, 1983 in class 39 of Nice Agreement [Annex K3 ];
•“AIR FRANCE” Community nominative trademark n° 2528461 of January 9, 2002 in classes 6, 8, 9, 12, 14, 16, 18, 19, 20, 21, 24, 25, 28, 29 of Nice Agreement [Annex K4 ];

As stated before, the Complainant is also the registrant of many cctld (country code top level domains) domain names (more than 100). Anyway, the Complainant's trademark "AIR FRANCE" is well and widely known throughout the world and easily recognizable as such. Several Courts of Justice and Administrative Panels have already recognized the well-known character of the trademark "AIR FRANCE". So did WIPO Arbitration and Mediation Center in previous UDRP cases:

•WIPO CASE D2003-0639 regarding WWWAIRFRANCE.COM : The Complainant’s trademarks have strong reputation and are widely known, as evidenced by several trademark registrations;
•WIPO CASE D2003-0417 regarding ARIFRANCE.COM: “Especially when taken into account the undisputed fame and recognition of the trademark AIR FRANCE, it is in the Panel’s opinion not doubtful that the domain name may be confused with the trademark.”

And more:

•WIPO CASE D2003-0830 regarding AIRFRANCE-KLM.NET/ORG/BIZ;
•WIPO CASE D2004-0170 regarding AIRFRANCEDIRECT.COM;
•WIPO D2004-0239, regarding AIRFRANCEHOLIDAY.COM;

So did also the Praha Court of Justice in its verdict dated November 24, 2004 (case 19 Cm 55/2002-47) regarding the bad faith registration and use of the domain name AIRFRANCE.CZ by M. Pavel Simon: “The Court states indisputable that the Complainant (société AIR FRANCE) is a worldwide known transport company (…) and that its trade name acquired a great fame and renown thanks to its high quality and long-time activity (…) since 1933.”

A similar decision has been handed by the Bucarest Court of Justice regarding bad faith registration and use of the domain name AIRFRANCE.RO : The naming AIR FRANCE is largely well-known and appreciate by many consumers in the entire world (legal proceeding n° 6579/21 11 2000, decision dated November 6, 2001). As a consequence, it should be indisputably considered that the trademark "AIR FRANCE" owned by the Complainant is not only registered and used in commerce in a great majority of countries in the world, but is well-known in the sense of article 6 bis of the Paris Union Convention.

2. Evidence of abusive registration:

The domain name WWWAIRFRANCE.CO.UK is confusingly similar to the Complainant’s famous trademark “AIR FRANCE”. First, the trademark “AIR FRANCE” is entirely reproduced in the disputed domain name. Second, the domain name combines the Complainant’s famous trademark with the prefix “WWW“. WWW is the well-known acronym for “World Wide Web” and is an extremely common prefix in the context of domain names. The mere addition of the prefix “WWW“ in front of the Complainant’s well-known trademark is not sufficient to confer a self distinctiveness to the domain name in issue, but on the contrary appears undoubtedly designed to take advantage of the mistake likely to be made by internet users when trying to access the Complainant’s UK website at http://www.airfrance.co.uk, i.e. missing the dot between the prefix WWW and the official domain name AIRFRANCE.CO.UK.

As to case law, the mere addition of a generic or descriptive term to an otherwise distinctive or well-know trademark does not serve to distinguish the domain name from the Complainant’s trademark.

See for example:

•WIPO Case D2003-0639 Société AIR FRANCE ./. Vladimir FEDEROV regarding WWWAIRFRANCE.COM: “The prefix "www" is the well-known acronym for "World Wide Web", and is an extremely common, although not universal, prefix (when succeeded by a period) to the domain name in an URL for a web page on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain name. The Panel therefore concludes that WWWAIRFRANCE.COM is confusingly similar to the trademark “AIR FRANCE”;

Société AIR FRANCE claims that the Respondent is obviously engaged in a typo-piracy conduct. Moreover, the Respondent uses the domain name WWWAIRFRANCE.CO.UK without any website to redirect in a transparent way internet users to société Air France’s British website through société Air France’s affiliation program. Indeed, since years, société Air France UK set up an affiliation program to the attention of webmasters who have websites dedicated to travel and tourism. Any booking a visitor arriving from an Affiliate's website makes are tracked by the Affiliate platform "Commission Junction" (Tradedoubler.com previously [Annex G]) and a commission is paid. The website owners can generate traffic for Air France by placing Air France creatives, textlinks or a product feed on their websites, or by bidding in search engines (keyphrase "Air France" excluded). See all information relative to the Complainant’s affiliation program in [Annex G].

However, the fact that the domain name WWWAIRFRANCE.CO.UK points to AIRFRANCE.CO.UK website through the Complainant’s affiliation program is not likely to dismiss the abusive character of the litigated domain name registration and use by the Respondent. Indeed, first the Respondent had no rights to register nor use a domain name reproducing the trademark AIR FRANCE. The Respondent is not commonly known under the name AIR FRANCE. The Complainant asserts that it is not in business relationship with the Respondent. No licence or authorization has been granted to Rob Langton to make any use, nor apply for registration of the confusingly similar domain name WWWAIRFRANCE.CO.UK. The Respondent has registered this domain name precisely because he knew the well-known character of the trademark "AIR FRANCE" and the traffic generated by the Complainant’s British website for the only purpose of generating the biggest commercial gain through the Complainant’s affiliation program.

Indeed, all internet users who would have mistype the Url http://www.airfrance.co.uk missing the dot between the prefix WWW and the domain name AIRFRANCE.CO.UK would be redirected to the Complainant’s website in a transparent way. By this way, any transaction made by one of these internet users on société Air France’s British website will generate a commission to the benefit of Rob Langton. Société Air France points out that tourism creates an important traffic on the internet: By registering the disputed domain name, there is no doubt that Rob Langton expected to take financial advantage of this paying business by misleading internet users.

The Complainant would also like to remind that M. Langton is using said domain name since its registration in February 2003. Moreover, the Respondent’s use of the domain name WWWAIRFRANCE.CO.UK to redirect internet users to the affiliated website in a transparent way without any website or content is clearly prohibited by the terms of the affiliation providers service agreement: See Tradedoubler.com affiliation service agreement:

“Air France is trademarked and therefore this brand name can not be used as a keyword or in the title of a link on any pay per click search engines. It should also not be visible in the Url or destination click through Url” [Annex L1].

“Point 6: The Affiliate must not in any way generate or contribute to generating Artificial Traffic to Linked websites” [Annex L2]. Definitions: “Artificial Traffic – is a collective term for invalid Clicks, Leads and Transaction, which may originate (for example without limitation) from automatic openings, spiders, robots (…) clicks which are not preceded by an active act of a visitor who wants to reach a certain website” [Annex L2].

See Commission Junction service agreement: (iii) Infringement. None of Your promotional activities may infringe an Advertiser's proprietary rights (including but not limited to trademark rights), CJ's proprietary rights, or a third party's proprietary rights [Annex L3].

As a consequence, the Complainant claims that such registration and use have to be considered as abusive, and asks for the transfer of the domain name WWWAIRFRANCE.CO.UK to its benefit.”

Response

As noted above, the Respondent did not file a Response.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent’s default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent’s non-compliance as I consider appropriate.

Complainant’s Rights

The Complainant must prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

The definition of ‘Rights’ in the Policy “includes, but is not limited to, rights enforceable under English law.” This clearly encompasses United Kingdom and European Community trade mark registrations and unregistered rights in the nature of the goodwill necessary to found a passing off action in England and Wales.

On the basis of the matters set out in the Complaint and substantiated in the materials set out in Annexes A, B, C, D, E, F, G, H1, H2, H3, H4, I, J, K, L1, L2 and L3 (!) thereto, I have no doubt whatsoever that the Complainant now owns, and as at the date of the registration of the Domain Name in 2003 owned, the requisite Rights in the mark AIR FRANCE.

The Complainant may be a French airline (perhaps even ‘the’ French airline) but this does not fall foul of the section of the Policy which provides that “a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”. By way of analogy, no one would doubt that ‘British Airways’ is a distinctive household name despite its descriptive connotations; in my view the same is true of ‘Air France’.

I am further satisfied that the name AIR FRANCE is very closely similar to the Domain Name wwwairfrance.co.uk (ignoring, as I am required to do, the first and second level suffixes). Though I have not been provided with a copy of WIPO Case D2003-0639 Société AIR FRANCE v Vladimir FEDEROV mentioned in the Complaint – and have not sought out a copy of my own initiative – I would entirely agree with and adopt what was apparently said by the WIPO Panel in that case, namely “The prefix "www" is the well-known acronym for "World Wide Web", and is an extremely common, although not universal, prefix (when succeeded by a period) to the domain name in an URL for a web page on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain name.” Anyone with any experience of the web would acknowledge this to be correct.

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Complainant’s case is put under both limbs of paragraph 1: both the initial registration and the subsequent use are alleged to be abusive.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. The Complainant does not specifically cite or rely on any of these sub-paragraphs (preferring, somewhat unhelpfully, to cite a number of decisions under the rather different WIPO regime). This being, in my view, a fairly straightforward case, I can see no injustice to the Respondent in adopting the Complainant’s approach to the question of Abusive Registration ‘in the round’.

A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. I do not regard any of the factors therein set out as being particularly pertinent to the facts of this dispute.

I will first deal with the first limb of the definition of “Abusive Registration” in paragraph 1 of the Policy, namely registration of the Domain Name. This is a straightforward matter. In the absence of any explanation to the contrary from the Respondent, I regard it as self-evident that the only reason anyone would register ‘wwwairfrance.co.uk’ would be to take advantage of people who were trying to reach the Complainant’s website and mistyped the address. The Complainant rather colourfully refers to this conduct as “typo-piracy”; thankfully I don’t have to decide whether that label is applicable in this instance or not. However I do consider that this constitutes taking unfair advantage of the Complainant’s Rights, irrespective of the use to which the Domain Name is subsequently put. The Complainant has thus discharged its burden under the first limb of “Abusive Registration”.

Although it is of course strictly unnecessary to go any further in the light of my conclusion under the first limb, I will nevertheless deal with the second limb of definition of “Abusive Registration” in paragraph 1 of the Policy, namely use of the Domain Name. On a superficial level, it could be said that the use to which the Domain Name has been put by the Respondent is benefiting the Complainant – all of those mis-typers now end up at the destination they intended to reach, thanks to the selfless action of the Respondent in joining the Complainant’s affiliate program. But I doubt that the Respondent’s motives are quite so altruistic; and I infer that he is more likely to have been motivated by the prospect of earning commission on the occasion of each mis-typer. And in doing so he has seemingly placed himself in clear breach of the terms of the Tradedoubler.com and Commission Junction affiliation service agreements (extracted copies of which have been provided to me). On the evidence as a whole, giving due weight to the Respondent’s failure to file a Response, I consider that the Complainant has discharged the burden of proving that the Domain Name has been used in a manner which takes unfair advantage of the Complainant's Rights.

For the reasons summarised above I have concluded that the Complainant has succeeded, on the balance of probabilities, in substantiating both limbs of the definition of Abusive Registration under paragraph 1 of the Policy. Accordingly I conclude on the evidence before me that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision

Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, wwwairfrance.co.uk, should be transferred to the Complainant.

______________________		September 29th, 2006

         Philip Roberts			Date