In a recent WIPO decision Societe Air France v. Mark Allaye-Chan (WIPO D2009-0327, May 14, 2009) a single member panel was faced with a dispute over www.airfrance-suck.com. A brief history of the airline includes the following. Air France began operations in 1933 and operates an air transport business (involving passenger transport, cargo transport and maintenance services). Air France is a national airline, with flights to over 180 destinations and 98 countries. Air France maintains a website at www.airfrance.us. Respondent, claimed to be Edmond Chow, and not the listed Respondent. Mr. Chow claimed that he used Mr. Allaye-Chan, his friend, to register the domain using Allaye-Chan’s already established domain name account. Air France complained that the disputed domain was not being used a gripe or “sucks” site but instead redirected visitors to a Google search engine.
The Panel reviewed the ICANN UDRP policy elements, section 4(a), wherein the Complainant must prove (i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in the disputed domain names; and (iii) the disputed domain names have been registered and used by the Respondent in bad faith.
In addressing the first element, whether the domain is identical or confusingly similar to Complainant’s mark, the Panel noted that the domain contained the entire mark of Complainant. The Panel noted that prior panels had found this element could be satisfied because the domain name incorporated Complainant’s entire mark. Interestingly, the Panel explained that there was a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term, since Complainant originates in France. As a result, the Panel found Complainant satisfied this “confusingly similar” element.
Moving to the second element, whether the Respondent had any rights or legitimate interests in the domain, the Panel quoted a prior decision as follows:
Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, sets out four elements which should be met to succeed under this limb: 1. The Respondent’s use must be legitimate noncommercial or fair use; 2. The use must be without intent for comment gain; 3. The use must be without intent to misleadingly divert consumers; and 4. The use must be without intent to tarnish the trade mark of the complainant. While the Response states that the disputed domain name was registered for the purpose of a legitimate protest site, there is no evidence to support this proposition. The Respondent has not provided evidence before the Panel of any demonstrable steps it has taken to launch a website at the disputed domain name, related to his grievance with the Complainant. At the time of writing this decision, the website was not operational.
Following Mission KwaSizabantu the Panel then noted:
Admittedly the disputed domain name has only been registered for a short time (since January 5, 2009) and it may be that the Respondent has not had sufficient time to launch his protest site. However, the website has previously resolved to a Google search engine (which allows for the possibility of commercial gain), and therefore the Panel cannot see how the Respondent satisfies the four requirements set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279.
As a result, the Panel found that Complainant satisfied the second prong as well. Moving onto the last element, whether the Respondent registered and used the domain in bad faith, the Panel found that “while the website may not currently be active, it previously resolved to a Google search engine, which indicates that at some stage, the disputed domain name was used for commercial gain. While there may be some other intended purpose for the disputed domain name, no clear evidence was put forward by the Respondent of such use.”
Ultimately, the Panel agreed with Complainant and ruled to TRANSFER the disputed domain.
DefendMyDomain Commentary: As noted above, the Panel found that the disputed domain had only been registered for a short time. Since the Complaint was filed in March 2009 and the domain was registered in 2009, we can only assume/recommend that domainers start “using” the domain within three months of ownership. It will be interesting to see if other Panels make similar findings.
