Complainant: Société Air France
Country: France
Respondent: Pascal Zembra
Country: Belgium
airfrance-klm.co.uk and airfranceklm.co.uk
The Complaint was validated by Nominet on 12 December 2008, and was sent to the Respondent on 17 December 2008. Nominet informed the Respondent that it had until 12 January 2009 to respond to the Complaint.
A Response was filed on 12 January and the Complainant was notified on the same day that it had until 19 January to file a Reply. No Reply was filed, and the dispute proceeded to mediation. Mediation was not successful, and on 26 March 2009, the Complainant paid the requisite fee for an Expert Decision.
I was thereafter contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I responded to Nominet confirming that I had no conflict preventing me from providing a decision.
The matter was thereafter duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.
The Complainant is the well known airline company that trades as "AIR FRANCE", and can trace its origins back to 1933. The company has a substantial number of registered trade marks for "AIR FRANCE", and domain names that incorporate the mark. The main website address is
KLM Royal Dutch Airlines, is another well known airline company. It also has a substantial number of registered trade marks for "KLM" and operates a website, the main address for which is
On 29 September 2003 (although the Respondent believes the correct date to have been 30 September) Air France and KLM announced that they were to merge. They registered a number of domain names incorporating both of their marks,
The Respondent identifies himself as a "director in a global industrial company", with experience of a "giant merger". He has no formal connection with KLM or Air France. He registered the Domain Names on 30 September 2003, when he became aware of the above mentioned announcement of the merger between Air France and KLM, with the intention of operating a 'blog' to follow the evolution of the merger. The blog was operational two days after the domains were registered and has been operational ever since, save for a period when the Respondent's server was in transit.
The site included the following text, which the Respondent included to avoid any possible confusion –
"Airfrance-KLM.co.uk, a site about the merger
This web site is a compilation of on-line information resources as well as technical, financial and social impact analysis related to the creation of the biggest airline company in the world. Its goal is to help us better understand the mechanisms that led to one more consolidation in the world of industrial giants.
This web site is maintained during his free time by a person independent from Air France and from KLM. For official informations about Air France and KLM please visit their respective web sites."
KLM is not joined in the proceedings, although the Complainant asserts that it has informed KLM of the proceedings, and KLM has "agreed" with the filing of the Complaint.
Complainant
The Complainant asserts that the Domain Names are similar to its business name and famous trade mark (and those of KLM) and that the Domain Names in the hands of the Respondent are abusive registrations as defined in the Dispute Resolution Service Policy (the "Policy").
In support of its claim to Rights, the Complainant relies upon the extent of its use of the mark, the various trade mark registrations that it owns, prior determinations by various courts and administrative panels that the marks are 'well-known', the domain names that it owns, and also the marks and domain names held by KLM.
In support of the claim that the Domain Names are Abusive Registrations the Complainant says (in summary) that -
(i) The Domain Names are confusingly similar to the Complainant's mark.
(ii) The Domain Names combine two famous trade marks ('Air France' and 'KLM') virtually identical to the Complainant's mark – which is inherently abusive, and will be confusingly similar to the Complainant's mark because of the relationship between Air France and KLM.
(iii) The Respondent had no right to register or use the domain names, that he must have been aware of the existence of the Complainant and KLM, and that in such circumstances there is a presumption that the Respondent registered the domain for the purposes of selling it to the Complainant or one of its competitors, or to be used for commercial gain, such that its use would create a likelihood of confusion with the Complainant's mark.
(iv) The passive holding of the domain in conjunction with the adoption of a well known mark is bad faith.
The Complainant requests that the Domain Names be transferred.
Respondent
The Respondent does not challenge the existence of the Complainant's Rights, nor does he seemingly challenge the Complainant's assertion that the Domain Names are similar to a mark in which it has rights. Indeed he says that the names were "the most relevant name I could find for a web site talking about a merger between Air France and KLM".
In defence of the allegation that the Domain Names are abusive registrations, the Respondent says (in summary) that –
(i) The purpose of the website to which the Domain Names are pointed, is to talk about the merger and the site was not therefore passive.
(ii) He took care to prevent confusion with the Air France or KLM official site, by making a clear statement on his site that he was independent from them.
(iii) The site was not used to conduct any business or generate any harm to the Complainant.
(iv) He is entitled to operate the site by virtue of Paragraph 4(b) of the Policy – tribute or criticism sites.
(v) The Complainant has known of the Respondent's site for five years, and has delayed in taking action.
General
To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:
(vi) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and
(vii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).
The Complainant must make out its case to the Expert on the balance of probabilities.
Complainant's Rights
The DRS Policy defines Rights as follows -
"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"
There would appear to be no argument between the parties that the Complainant does qualify as having the necessary Rights. I should however say a few words about KLM, as its mark also appears in the Domain Names. KLM is not a formal party to the Complaint. However in my opinion, following the merger of Air France and KLM and the use of the combined marks, for example in the domain names that were registered by them, such use is sufficient for the Complainant to meet the qualifying criteria of having "Rights" under the Policy.
The Policy requires such Rights to be in a name or mark identical or similar to the Disputed Domain Name. For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The comparison is therefore between 'AIR FRANCE' or 'AIRFRANCE-KLM' on the one hand, and 'AIRFRANCE-KLM' and 'AIRFRANCEKLM' on the other. In my opinion the Complainant has established that it has Rights in a mark either identical or similar to the disputed Domain Name.
Abusive Registration
I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.
The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.
The Policy defines an Abusive Registration as -
"a Domain Name which either:
(viii) 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
(ix) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights"
and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.
In most circumstances where a Respondent has registered a domain name that is identical or similar to a name or mark in which the Complainant has rights, the name or mark is well known, and the Complainant and marks were known to the Respondent, one would be unlikely to have a great deal of difficulty in concluding, as many Experts have previously, that the relevant domain name would be an abusive registration.
However, those responsible for drafting (and amending) the Policy foresaw that this was not an absolute proposition, and there might be instances where the domain name would not be an abusive registration. In particular and of relevance to the present case, this might be so if the domain name were used for the purpose of tribute or criticism. In that respect Paragraph 4(b) of the Policy says as follows –
"Fair use may include sites operated solely in tribute to or in criticism of a person or business"
It may be worth noting for the purposes of later discussion (see below) that this paragraph was revised from the earlier draft which said as follows –
"Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:
i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts rights, without any addition; and
ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant's authorisation
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.
It is noticeable that in the revised Policy, there is (a) no reference to "identical" Domain Names, and (b) no reference to the burden shifting to the Respondent in the circumstances of tribute or criticism without authorisation. The amendments to the Policy took place after an appeal panel had considered the effect of Paragraph 4(b), in Hanna-Barbera Productions, Inc v Graeme Hay (DRS 00389). I will not set out all of the facts of that case here as the original expert decision and the appeal decision are accessible on Nominet's website. However in summary, the Respondent had registered the domain name
There are parallels between the above mentioned case and the present one. The domain names are used within the ambit of tribute/criticism sites. I should say that it is my view that the terms "tribute" and "criticism" as used in the Policy are to be construed sufficient widely to encompass the activities of the Complainant herein, which might more accurately be described as the provision of an "information" site. Both sites included a notice/disclaimer that was intended to disabuse visitors of any 'initial interest confusion' to the effect that the site is linked with the person or body to whom tribute is paid or criticism made, and all of the domain names are identical to the complainants' names or marks. However in the present case there is no suggestion that any business has been conducted by the Respondent and there has been no evidence presented which suggests that the Complainant's customers or potential customers have been confused by the use of the Domain Names.
However I tend to agree with the appeal panel in the
In the circumstances as described herein, it is my view that the adoption of domain names identical to the marks of the Complainant, would lead to a loss of control by the Complainant or a dilution of those marks, and as such the Domain Names take unfair advantage of and are unfairly detrimental to the Complainant's Rights.
I should add that I do not consider that the delay on the part of the Complainant in bringing the Complaint should prevent the Complaint from succeeding.
For the reasons set out above, I find that the Complainant does have Rights in respect of a name and mark which is identical and/or similar to the Domain Names
The disputed Domain Names should be transferred to the Complainant.
Signed Simon Chapman Dated 23 April 2009