Air France - KLM v. Xiaoguang Jiang / Future iService LLC
Claim Number: FA1803001774659
Complainant is Air France - KLM (“Complainant”), represented by Steve Fuhrmann of MEYER & Partenaires, France. Respondent is Xiaoguang Jiang / Future iService LLC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airfranceklm.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Scott R. Austin, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <airfranceklm.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2018 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@airfranceklm.us. Also on March 6, 2018, 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.
A timely Response was received and determined to be complete on March 26, 2018.
On March 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin, Esq., 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 to the usTLD Dispute Resolution Policy (“Rules”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, Air France - KLM, is the holding company of the Société Air France, a French passenger airline and freight company known as one of the largest in the world, and KLM Royal Dutch Airlines (“KLM”) a Netherlands - based passenger and cargo airline ranked fourth worldwide in international passengers carried and employing more than 34,000 persons worldwide. Together, the two airlines form one of the largest air transport groups in Europe and in the world. In 2014, AIR FRANCE - KLM group carried more than 87.4 million passengers and had revenues of 25.4 billion Euros.
2. On September 18, 2003, Complainant registered the domain name "AIRFRANCEKLM.COM" which resolves to a web site located http://wwwairfranceklm.com/ which displays Complainant’s services identified by its AIR FRANCE KLM mark.
3. Complainant has rights in the AIR FRANCE KLM mark based upon its registration of the mark both internationally with the World International Property Organization (“WIPO”) (e.g. WIPO—Reg. No. 863406, registered Jun. 17, 2005) claiming a priority date of December 21, 2004, for air transport services, among others, and in the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,335,339, registered Nov. 13, 2007), claiming a priority date of December 21, 2004, for air transport services, among others, in International Class 39.
4. Complainant’s AIR FRANCE KLM mark is “well known" based on article 6bis of the Paris Union Convention, which confers to its holder a broad protection.
5. Panels in prior UDRP cases have recognized Complainant’s mark as "well known".
6. Respondent’s WHOIS information shows a U.S. address where Complainant’s AIR FRANCE KLM mark is well known, and, therefore, Respondent had actual knowledge of Complainant’s rights in its well-known AIR FRANCE KLM mark at the time Respondent registered the <airfranceklm.us> disputed domain name.
7. Respondent’s <airfranceklm.us> domain name is identical and confusingly similar to Complainant’s AIR FRANCE KLM mark, as the domain name consists of Complainant’s AIR FRANCE KLM mark in its entirety and the 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, nor does appending the “.us” country code top-level domain (“ccTLD”), to Complainant’s mark.
8. Respondent is not related in any way to Complainant nor is it authorized to use Complainant’s AIR FRANCE KLM mark.
9. Respondent is neither a licensee, employee, subsidiary nor a subcontractor of the Complainant or its subsidiaries.
10. No license or authorization has been granted to Respondent to make any use, nor apply for registration of the <airfranceklm.us> disputed domain name.
11. Respondent has no rights or legitimate interests in the disputed domain name.
12. Respondent’s use of the confusingly similar domain to divert users seeking Complainant’s website to the website of Respondent, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead, the <airfranceklm.us> disputed domain name resolves to a parking webpage dedicated to registrar GoDaddy which attracts Internet users to a third party's commercial website.
13. Respondent registered and is using the disputed domain name <airfranceklm.us> in bad faith.
14. Respondent registered the disputed domain name with the fraudulent aim to sell the name for an amount in excess of registration costs.
15. Respondent has engaged in a pattern of bad faith conduct filing numerous registrations of domain names targeting the marks of other well-known airlines, banks, automobile manufacturers and telecommunications companies.
B. Respondent makes the following contentions:
1. Respondent registered the <airfranceklm.us> domain name on July 19, 2015, almost twelve years after Air France – KLM was founded. Respondent does not therefore think Complainant has the right to dispute the domain name.
Complainant owns and has established rights in the AIR FRANCE KLM mark through evidence it submitted of trademark registrations in the United States and internationally in numerous jurisdictions around the world.
Respondent’s <airfranceklm.us> disputed domain name is confusingly similar to Complainant’s AIR FRANCE KLM mark because it is comprised of Complainant’s AIR FRANCE KLM mark in its entirety, deletes only the spaces between the three component terms of Complainant’s mark and adds only the “.us” ccTLD to Complainant’s mark, which differences are inconsequential to overcome a finding of confusing similarity.
Respondent is not commonly known by the disputed domain name or by Complainant’s AIR FRANCE KLM mark, nor is Respondent licensed by Complainant to use its AIR FRANCE KLM mark.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent registered the <airfranceklm.us> disputed domain name on July 19, 2015, well after Complainant established rights in its AIR FRANCE KLM mark.
Complainant’s AIR FRANCE KLM mark was registered and well known in the U.S. where Respondent is located, as well as many countries around the world well before Respondent registered its disputed domain name on July 19, 2015.
Respondent has engaged in a pattern of bad faith conduct filing numerous registrations of domain names targeting the marks of other well-known airlines, as well as banks, automobile manufacturers and telecommunications companies.
Respondent registered and is using the disputed domain name <airfranceklm.us> 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision
Complainant contends it has established rights in the AIR FRANCE KLM mark based upon evidence submitted of registration of the mark with WIPO and the USPTO (WIPO—Reg. No. 863406, registered Jun. 17, 2005; USPTO—Reg. No. 3,335,339, registered Nov. 13, 2007). Evidence of registration of a mark with trademark agencies such as the USPTO and other multiple jurisdictions as Complainant has shown sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”); Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); see also Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Accordingly, the Panel finds here that Complainant has established rights in the AIR FRANCE KLM mark under Policy ¶ 4(a)(i).
Next Complainant contends that Respondent’s <airfranceklm.us> disputed domain name is identical and confusingly similar to the AIR FRANCE KLM mark because the name consists of all the same letters of Complainant’s mark, in the same order, but removing the spaces between each component term comprising the mark and adding the ccTLD “.us.” Previous panels have found both that removal of spacing in a mark and addition of a gTLD or ccTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”); Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”) see also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Complainant has established that the <airfranceklm.us> disputed domain name is confusingly similar to a mark in which Complainant has established trademark rights and, therefore, has met its burden under Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
The Panel recognizes and is mindful that Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <airfranceklm.us> disputed domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AIR FRANCE KLM mark in any way. The Panel notes that relevant information to this determination includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);.Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ [4(c)(iii)].”). Complainant has submitted competent evidence that the WHOIS identifies Respondent “Xiaoguang Jiang/ Future iService LLC,” as the registrant/registrant organization. On the evidence of the Whois record, the Panel finds that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it under Policy ¶ 4(c)(iii).
Complainant asserts that no evidence exists to show that Respondent has ever been authorized to use Complainant’s AIR FRANCE KLM mark. Panels may use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately 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. Nothing submitted by Respondent in its Response refutes or contradicts Complainant’s evidence and assertions. Thus, in addition to finding that Respondent is not commonly known by the disputed domain name based on the WHOIS evidence, the Panel considers Complainant’s assertions of no affiliation with Respondent or authorization by Complainant to use its mark supportive in reaching the Panel’s determination of these issues under Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent’s domain name resolves to a parking webpage dedicated to its registrar GoDaddy which Complainant claims confuses and attracts Internet users to a third party commercial website. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ [4(c)(ii)] or a legitimate noncommercial or fair use pursuant to Policy ¶ [4(c)(iv)]); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ [4(c)(ii)] nor a legitimate noncommercial or fair use under Policy ¶ [4(c)(iv)].”). The Panel finds that Respondent does not have rights or legitimate interests in the domain name based on Policy ¶¶ 4(c)(ii) or (iv).
The Panel also finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Based on the foregoing analysis the Panel finds, therefore, that Respondent has not made a bona fide offering of goods or services nor does Respondent’s use constitute any legitimate noncommercial or fair use. Complainant has met its burden under Policy ¶ 4(a)(ii).
Complainant contends Respondent’s registration of the <airfranceklm.us> domain name is part of a pattern of bad faith registration of domain names incorporating well known marks. Complainant also contends that this pattern shows Respondent’s filing in bad faith with the intention of selling the names for an amount in excess of out of pocket registration costs. A pattern of bad faith registration can be established by a showing of other infringing domain names registered by the respondent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Intention to sell a domain name for an amount in excess of out of pocket registration costs can indicate bad faith per Policy ¶ 4(b)(i). See Globosat Programadora Ltda v. Artmidia Comunicação Criação E Arte Ltda., D2000-0605 (WIPO Sept. 13, 2000) (“[T]he fact that almost all the domain names registered by the respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that… Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration.”). Complainant’s evidence submitted in its Annex supports that Respondent has engaged in a pattern of bad faith registration because it includes a list of 23 other well-known airlines trademarks incorporated in their entireties in .us ccTLD domain names registered by Respondent with the same WHOIS contact information. The list submitted in evidence also includes.us domains incorporating six additional well known non-airline industry marks: for banks, automobile manufacturers and telecommunications companies: <abacusbank.us>, <barclayz.us>, <chinatelecom.us>, <chinaeastern.us> <porsche-se.us>, and <volkswagenag.us>.
Based on the evidence submitted by Complainant and lack of any evidence refuting or challenging it by Respondent, the Panel finds that the registration and use of the <airfranceklm.us> domain name is part a of pattern of bad faith registration and use by Respondent pursuant to Policy ¶ 4(b)(ii).
Complainant also contends that in light of the fame and notoriety of Complainant's mark, it is inconceivable that Respondent could have registered the <airfranceklm.us> domain name without actual knowledge of Complainant's rights in its well-known AIR FRANCE KLM mark. The Panel notes that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge alone. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that based on Respondent’s location in the U.S. where Complainant’s mark has been registered and in use for over 12 years prior to the registration of the disputed domain name and Complainant’s mark has been found to be well known by panelists in prior UDRP cases, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is additional evidence to support a finding of bad faith under Policy ¶ 4(a)(iii). See AIR FRANCE KLM v. Ho Nim, D2010-0838 (WIPO July 12, 2010) ("Both the Complainant's Trade Mark as well as the marks AIR FRANCE and KLM are well known. This fact, as well as the existence of the marks, must have been known to the Respondent when he registered the Disputed Domain Name."); See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it”). Complainant further asserts that Respondent’s registration of domain names incorporating the trademarks of other airlines indicates it had actual knowledge of Complainant’s rights. The Panel finds sufficient evidence to agree with Complainant that Respondent did have actual knowledge of Complainant’s well-known mark when it registered the disputed domain name, which would further support bad faith. The Panel finds Complainant has met the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airfranceklm.us> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: April 11, 2018
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