Societe Air France v. Muhammad Faisal
Claim Number: FA1710001755037
Complainant is Societe Air France (“Complainant”), represented by Steve Fuhrmann of MEYER & Partenaires, France. Respondent is Muhammad Faisal (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airfrancepilot.us>, registered with NameCheap, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2017; the Forum received payment on October 23, 2017.
On October 23, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <airfrancepilot.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@airfrancepilot.us. Also on October 30, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
• National trademark "AIR FRANCE", registered in the USA under N°3274207 on August 7, 2007 for the classes 16, 35 ( ...marketing and promotion services for airlines companies...), 38 ( ...electronic transmission on topics related to air travel information, reservations, flights and airports via the internet and intranet networks...) of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, live,
• National trademark "AIR FRANCE", registered in the USA under N° 2876220 on August 24, 2004 for class 39 (Transport services by air...) of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, live,
• International trademark "AIR FRANCE" (n° 828334), registered on October 20, 2003 and renewed in 2013 for the classes 6, 8, 9, 12, 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, live,
• The trademark "AIRFRANCE" (without the space) is also registered and live in many countries as a national trademark and also as an international trademark (including the USA under n° 1123935, registered on February 14, 2014) for the classes 09, 16, 18, 35, 36, 37, 38 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, live,
• the national trademark "AIR FRANCE" Nr. 210618 was also registered in Pakistan on June 18, 2005, renewed in 2015 in class 38, live.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy 1/ 4(a)(i).
SOCIETE AIR FRANCE'S rights on "AIR FRANCE":
Societe AIR FRANCE is the trade name of Complainant, used in commerce since 1933.
Therefore, in this respect, Complainant has filed many national, Community and International trademarks consisting or including the wording "AIR FRANCE" which he owns for years.
Moreover, the trademark "AIR FRANCE" has been recognized as Well-Known by the WIPO Arbitration and Mediation Center in UDRP cases, notably in Administrative Panel Decision Societe AIR FRANCE v. Alvaro Collazo, WIPO Case No. D2004-0446 , Administrative Panel Decision Societe AIR FRANCE v. Alvaro Collazo, WIPO Case No. 02003-0417, Administrative Panel Decision AIR FRANCE v. Kitchkulture, WIPO Case No. D2013-1192.
For instance, a Panel ruled that "Complainant has rights in the mark AIR FRANCE registered for numerous goods and services in multiple jurisdictions. Complainant 's mark is not only registered and used in the course of trade in numerous countries, but also recognized as a well-known mark" and that "the mark has acquired considerable fame and recognition" (Administrative Panel Decision Societe Air France v. Spiral Matrix, WIPO Case No . 02005- 1337) .
Therefore, the trademark "AIR FRANCE" is undoubtedly Well-Known in the sense of article 6 bis of the Paris Union Convention.
In this context, since 2004, Societe Air France has set up, activated and operates a global web portal located at the address http : //www.airfrance.com , by which its clients could be informed on the services offered by Complainant and could also book a flight. On April 24, 2002, Complainant registered the domain name AIRFRANCE.US, which activates a website dedicated to its north-American customers. This website is available at: http ://www .airfrance.us.
Complainant consequently owns trademark rights on the sign AIR FRANCE and intellectual property rights on the domain names airfrance.com and airfrance.us.
Identity or confusing similarity with the trademarks "AIR FRANCE " and "AIRFRANCE"
Complainant claims that the domain name AIRFRANCEPILOT.US is confusingly similar to the trademarks "AIR FRANCE" and "AIRFRANCE".
First, it is now well established in dispute resolution cases that "[t]he use or absence of punctuation .marks, such as hyphens or spaces, does not alter the fact that a domain name is identical to a mark" (UDRP: Rolls Royce PLC v. Hallofpain, WIPO Case No . 02000- 1 709, USDRP: Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA0207000117014 (Forum
Second, the disputed domain name is reproducing the trademarks AIR FRANCE and AIRFRANCE.
The mere addition of the word PILOT with the Well-Known trademark AIR FRANCE does not alter the risk of confusion with this trademark. Indeed, such voluntary addition of a generic word is devoid of distinctiveness since the sole distinctive part of the domain name is the Well-Known trademark "AIR FRANCE". Further, the word "pilot" immediately refers to the business field of Complainant.
Administrative Panels have already delivered decisions in similar configurations:
o See Victoria's Secret Stores Brand Management, Inc. v. SWEInc. FA1006001328364 (Forum July 15, 2010)(regarding <victoriasecretbras. com>
o See Seiko Epson Corporation and Epson America, Inc. v. Jerayu Tanachaia FA1011001360859 (Forum Jan 11, 2011)regarding <epsonlaserprintertonercartridge.us>, " Respondent's disputed domain name uses Complainant's entire mark in addition to the descriptive terms "laser", "printer", "toner' "cartridge' and the country code top-level domain ("ccTLD") ".us" which does not prevent Respondent's domain name from being confusingly similar to Complainant's mark. The Panel concludes that adding descriptive terms and a ccTLD to an established mark fails to distinguish the domain name from the mark under Policy ¶4(a)(i) .
o WIPO Case No. 02016-1935 Societe Air France v. Muhammad Faisal regarding <airfrancetickets.info>: "It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word [...] This is especially true where, as here, the descriptive or generic word is associated with Complainant and its services.
Third, the domain name is also confusingly similar to the domain name <airfrance.us>, used for years by complainant as its American portal. This similarity with this recognized domain name that shares the same ".us" Top Level Domain with the litigated domain name worsened the risk of confusion in the users' mind.
In view of these elements, the domain name disputed should be considered identical and confusingly similar to the trademark "AIR FRANCE".
[b.] Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in but not limited to UDRP Policy 1/ 4(c).
Respondent is not related in any way to Complainant and has not any authorization to operate the trademark "AIR FRANCE". He is neither a licensee, employee, subsidiary nor a subcontractor of Complainant.
To Complainant's best knowledge, Respondent is not currently and has never been known under the wording AIRFRANCE or AIR FRANCE or "pilot" or any of their potential combinations.
Respondent is making no clear use of the domain name. When one tries to resolve http://airfrancepilot.us or http://www. airfrancepilot. us through a web browser an error is generated.
One may notice that an alarming message is displayed by the domain name registrar directly on its whois database, in the "name server" section:
"blockedforabuse.pleasecontactsupport.com dummysecondary. pleasecontactsupport.com"
This rather confirms that Respondent has probably used the domain name for illegal or abusive purpose that visibility infringed its registrar's terms and conditions. Such use is of course not in connection with a bona fide offering of goods or services.
Respondent indeed cannot ignore that his behavior disturbs Complainant's rights, letting some of its clients resolving an error webpage instead of the official Air France's US web portal.
See for instance:
o WIPO Case N° 02014-0057 regarding <www-groupama.com> "Printouts from Respondent's websites submitted by Complainant, and the letter from the reseller of domain names DELTA-X Ltd. reveal that it is more likely than not that Respondent uses the "www.www-groupama. com" and "www.www groupama.net" websites for a phishing scheme and that the websites were blocked for abuse. This is not a bona fide use of the Domain Names."
Therefore, it is obvious that Respondent has no rights or legitimate interests in respect of the domain names.
[c.] The domain name(s) was registered in bad faith. UDRP Rule 3(b)( ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Complainant claims that Respondent has registered the domain name disputed with the perfect knowledge that he was infringing the Well Known trademark's distinctive sign.
At first, Complainant must remind that the domain name has been registered on May 17, 2017, when the trademark AIR FRANCE was already unquestionably well-known.
Second, Respondent chose to add the generic word "pilot" to the well-known trademark AIR FRANCE when he registered the litigated domain name. That choice demonstrates that he perfectly knew the field of operation of Complainant.
Third, Complainant underlines that Respondent has already failed to demonstrate his bad faith in several previous UDRP litigations:
Seven NAF cases from 2010 to 2017:
o Enterprise Holdings, Inc. v Muhammad Faisal, FA1012001362418, (Forum Jan. 13, 2011) <enterprisecarhire.info>
· , Enterprise Holdings, Inc. v Muhammad Faisal
FA11 02001372555 (Forum March 25, 2011)<enterprisecarhire .org>
o Philip Morris USAInc. v MUHAMMAD FAISAL, FA1511001649579 (Forum Dec. 23, 2015) regarding <malboros.com>
o American Dairy Queen Corporation v Muhammad Faisal , FA1605001673209 (Forum June 11, 2016) regarding <dairyqueen.site >
o Philip Morris USA, Inc. v. Muhammad Faisal, FA1705001731169, (Forum June 6, 2017) <marlboropromo.us> [...]
o Philip Morris USA INC. v. Muhammad Faisal, FA1706001737748 (Forum July 31, 2017) regarding <marlborocouponz.us> [...]
o Pettigo Comercio Internacional Lda v. Muhammad Faisal, FA1708001743042, (Forum Sept. 18, 2017) regarding <lycamobilewinners.com> [...]
WIPO Cases from 2016 to 2017:
o 02016-0621, Philip Morris USA Inc. v. Muhammad Faisal regarding < marlbooro.xyz>
o 02017-1081, Philip Morris USA Inc. v. Muhammad Faisal regarding <marlborocoupons4u.com >
Mr. Muhammad Faisal not only registered well-known trademarks out of bad faith, but repeated this behavior in spite of being found of bad faith in previous litigation. For example, in spite of unfavorable decisions ruled in 2015 (FA1511 001649579 ) and 2016 (02016-0621} regarding the well-known trademark MARLBORO, he nevertheless registered, out of bad faith, at least eight other names confusingly similar to this trademark in 2017 ( FA1705001731169 , FA1706001737748 and 02017-1081 ).
Fourth, Mr. Muhammad Faisal has already been found of bad faith in a previous UDRP litigation against Complainant:
o 02016-1935 , Societe Air France v. Muhammad Faisal regarding <airfrancetickets.info>.
That is why complainant claims that the registration of the domain name AIRFRANCEPILOT.US is a new clear illustration of Mr. Muhammad Faisal's sustained and cynical pattern of bad faith registration of domain names incorporating the trademarks of third parties.
Such pattern can of course not illustrate any good faith registration:
See :
o FA1708001743042 , Pettigo Comercio Internacional Lda v. Muhammad Faisal regarding <lycamobilewinners.com> [...] : "this action shows Respondent's business model. Respondent clearly violates the penumbra of Policy ¶4(b) because Respondent regularly registers the trademarks of others (or domain names which are confusingly similar to the trademarks of towers), see Philip Morris USA INC. v. Muhammad Faisal, Claim Number: FA1706001737748 (July 31, 2017). Therefore, this Panel finds bad faith registration and use on that basis."
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the AIR FRANCE mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. AIR FRANCE—Reg. No. 3,274,207, registered Aug. 7, 2007). Registration with a governmental national trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark, even if Respondent is located in another country (Pakistan in this case). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i).). Complainant has rights in the AIR FRANCE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <airfrancepilot.us> domain name is confusingly similar because it wholly incorporates Complainant’s mark, removes a space, appends the generic descriptive term “pilot” and adds the “.us” ccTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. The additional of a related generic term (“pilot” in this case) does not adequately differentiate Respondent’s domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”); see also Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶4(a)(i)); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Respondent’s <airfrancepilot.us> domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <airfrancepilot.us> domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that Respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). The WHOIS identifies “Muhammad Faisal” as the registrant. No evidence exists to show Respondent has ever been known as AIR FRANCE or AIRFRANCE. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Certainly Respondent makes no such claim. There is no obvious similarity between the disputed domain name and Respondent’s name. Respondent has never been affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. The Panel must conclude Respondent is not commonly known by the <airfrancepilot.us> domain name under Policy ¶4(c)(ii).
Complainant claims the disputed domain name has no website. This is clear because someone (presumably the registrar) has placed dummy nameservers in Respondent’s domain name entry because the originally resolving web site was “abusive.” This Panel has never seen such a thing done before and the registrar undoubtedly found exigent circumstances. Clearly, this is not an active use of the domain name, which is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Even if Respondent was using the domain name previously, it was not a bona fide use (the only reason the Panel can surmise that a registrar would delete a nameserver is the resulting web site was inserting malware into unsuspecting computers; hardly a bona fide use). Respondent has failed to provide a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent exhibits a pattern of bad faith registration and use. Respondent certainly fits that description. Policy ¶4(b)(ii) reads “[Respondent has] 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, provided that [Respondent has] engaged in a pattern of such conduct;...” In this case, Complainant has been able to register a domain name reflecting its mark. Therefore, this Panel cannot find bad faith on this ground.
Complainant claims Respondent had actual knowledge of Complainant’s rights in the AIR FRANCE mark prior to registration of the disputed domain name. There is no doubt that is true. The parties previously had a UDRP case together regarding the same mark, Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Faisal, Case No. D2016-1935 (11/9/2016). That predates the present disputed domain name’s May 17, 2017 creation date. Respondent clearly knew about Complainant’s mark before registering the present disputed domain name and decided to “do it again” for some unknown reason. Somehow Respondent seems to make a business out of this activity (or perhaps is merely a professional gadfly…there is no evidence on this point and none is required). Nevertheless, the final result is the same. Respondent had actual knowledge of Complainant’s rights in the AIR FRANCE mark prior to Respondent’s registration of the disputed domain name. This constitutes bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <airfrancepilot.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, November 27, 2017
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