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Dispute 100093

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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100093
Time of Filing 2009-08-27 10:16:04
Disputed domain name ASIA-AIRFRANCE.COM
Case Administrator
Name Josef Herian
Complainant
Organization société Air France
Authorized Representative
Organization Meyer & Partenaires
Respondent
Organization VALUE-DOMAIN COM / DIGIROCK, INC.
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of other legal proceedings with regard to the disputed domain name.
Factual Background
1.
The Complainant is an airline carrier company with seat in France. With its Complaint the Complainant requests the transfer of the disputed domain name “asia-airfrance.com” (“the Domain Name”).

2.
The Domain Name is registered through Key-Systems GmbH, a corporation located in Germany, as ICANN accredited registrar (“the Registrar”). The Who-Is entry for the Domain Name shows “Value-Domain.Com” as “owner-organization”, “admin-organization”, “tech-organization” and “billing-organization”, combined with the entry “Privacy Proxy”. The Complaint named “VALUE-DOMAIN COM” as the Respondent.

3.
On 27 August 2009 the Complainant filed its Complaint in English with the Czech Arbitration Court (“CAC”) against “VALUE-DOMAIN COM” as registered holder of the Domain Name.

3.1
On 27 August 2009 the CAC sent a Request for Registrar Verification to the Registrar. With Nonstandard Communication of 8 September 2009 the CAC informed the parties to the dispute of the Registrar’s answer, confirming that the Domain Name is registered with the Registrar through its reseller DIGIROCK and that the current Who-Is entry is up to date and reflects the domain holder, but that, according to the information of the Registrar, the contact is a domain proxy service and that the Registrar has no further information about the real owner. The Registrar, furthermore, confirmed that the Domain Name is and will remain locked during the administrative proceedings. However, the Registrar’s answer stated that “the language of the Registration Agreement is Japanese, not English”.

3.2
With Notification of Deficiencies in Complaint of 8 September 2009 the CAC informed the Complainant that its complaint had not been filed in the language of the proceedings and informed the Complainant that it had the possibility to submit an amended complaint within 5 days of receiving the notification.

On 10 September 2009 the Complainant filed its Amended Complaint, again in English. In asserting that English, and not Japanese, was the true language of the proceedings, the Complainant asked the CAC to forward its Amended Complaint to the Panel. The Amended Complaint named “DIGIROCK, INC.” as Respondent in addition to “VALUE-DOMAIN COM”.

3.3
On 11 September 2009 the CAC admitted the Amended Complaint to proceed further in the Administrative Proceeding.

The Respondent was informed – in English – that an administrative proceeding had commenced against it and that the Respondent was invited to submit its Response by 4 October 2009. The Respondent has not submitted a Response to date.

On 6 October 2009 the Panel was appointed.

3.4
With Procedural Order of 19 October 2009 the Panellist invited the Registrar to forward a sample of its Japanese registration agreement, preferably together with an English translation and an explanation of how it is used, to the CAC.

On 22 October 2009 the Registrar wrote to the CAC that the Domain Name was registered via an automated backend system by the Registrar’s reseller DIGIROCK (on their platform value-domain.com) for their costumer. DIGIROCK’s retail platform was Japanese only, so it would be safe to assume that the agreement would also be in Japanese. The Japanese registration agreement of the Registrar’s reseller could be found under http://www.value-domain.com/ but the Registrar were unable to provide an English translation. For more information about the privacy service DIGIROCK offers to its customers, the Registrar referred to the internet site http://www.value-domain.com/ The Registrar, furthermore, stated that it would be unable to determine the real registrant behind the privacy service, as its reseller did not keep the registrant data in escrow with the Registrar.

3.5
With its Procedural Order of 19 October 2009 the Panel had invited the Parties to comment on any statements submitted by the Registrar by 9 November 2009 the latest. On 6 November 2009 the Complainant submitted a Nonstandard Communication with which it upheld its claim that the language of the proceedings were English not Japanese.

The Respondent did not submit any comments.
Parties' Contentions
A. Complainant
4.
The Complainant requests the transfer of the Domain Name.

The Complainant asserts that the correct language of the proceedings is English. The Domain Name is registered with Key-Systems GmbH, located in Germany. Key-Systems GmbH, on its website, makes available a registration agreement in German and English.

Furthermore, the Amended Complaint (in the following only “Complaint”) asserts that the Respondent were familiar with the English language as the Domain Name is written in English and not German. The website hosted under the Domain Name by the Respondent displayed some English content (i. e. “Copyright © 2009” and “All Rights Reserved”). Furthermore, the Complainant refers to WIPO domain name decisions in English in which “VALUE-DOMAIN COM / DIGIROCK, INC.” were also the respondent.

The Complainant refers to WIPO cases stating that a “registration agreement” means the agreement between a registrar and the domain name holder. The Complainant, therefore, expresses the opinion that the registration agreement of Key-Systems GmbH is the relevant registration agreement in the present case and not an agreement concluded between DIGIROCK/Value Domain Com and their costumers.

The Complainant is of the opinion that it would be unfair if it had to translate the Complaint in a “foreign non-Latin language”.

Finally, the Complainant refers to DIGIROCK, INC.’s homepage under http://www.digirock.jp which is displayed in English.

5.
With regard to the substantive part of the Complaint the Complainant asserts that société Air France is one of the world’s major airline companies, tracing its origins back to 1933. The Complaint refers to the Complainant’s web portal under www.airfrance.com and refers to a number of other domain names held by the Complainant with different top level domains and second level domains containing the term “airfrance”.

The Complaint states that “société Air France” is not only the trade name of the Complainant but that the Complainant is, inter alia, the holder of the Community word mark No. 002528461 “AIR FRANCE”, registered on 7 October 2003 in numerous classes. Furthermore, the Complaint refers to a national Japanese trademark and an international trademark registration with protection in Japan, without providing proof hereof (the Annex C III referred to in the Complaint was not attached to the Complaint).

Finally, the Complaint refers to a number of WIPO cases, stating, inter alia, that “Air France” is considered a well known mark.

6.
The Complaint asserts that the term “Air France” is confusingly similar to the domain “asia-airfrance.com”. The top level domain “.com” must be disregarded while comparing the signs in question. The portion “asia”, as geographical indication, is merely descriptive.

7.
The Complaint denies that the Respondent has rights or legitimate interests with respect to the Domain Name. The Complainant denies being connected or having granted licences to the Respondent. The fact that the website hosted under the Domain Name contains a number of commercial links were a persuasive argument against a legitimate interest in using the Domain Name.

8.
The Complaint asserts that the Domain Name was registered, and is used in bad faith.

In this respect the Complaint points out to the assertion that “airfrance” is a well known mark and that, therefore, the Respondent must have known of the Complainant’s right to “Air France” at the time of registering the Domain Name.

The Complaint asserts that the Respondent is the owner of “more than 206 400 other domain names”, some of which have been subject to domain name arbitration proceedings.

The bad faith registration is, in the opinion of the Complaint, followed by bad faith use. The Complaint refers to the website hosted under the Domain Name in Japanese, which “displays counterfeiting content and numerous commercial hyperlinks”. The Complaint asserts that the obvious purpose of such use is to generate revenues by taking advantage of the Complainant’s well known name and trademark. The Respondent were using graphical elements similar to the Complainant’s own internet portal in order to create confusion, including a picture of an Air France plane as background.

The Complaint presents an Annex, which according to the Complainant is a computer translation of the Japanese text contained on the website. There, “advertisement style” entries were contained, creating the appearance that the Respondent were the Complainant and, hence Air France were the official owner of the Domain Name.

Finally, many of the commercial links contained on the website hosted under the Domain Name were displaying pictorial and written erotic content. As evidence for that the Complainant presents Annexes which are, in the opinion of the Panel, also computer generated translations.
B. Respondent
9.
The Respondent did not submit any statements during the administrative proceedings.
Discussion and Findings
10.
ICANN approved the application of the CAC to become an international provider of UDRP services on 23 January 2008. As ICANN accredited UDRP provider the CAC can administer the present proceedings.

The legal basis for the Panel decision is built by the Uniform Domain Name Dispute Resolution Policy (UDRP), the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP-Rules) and the CAC’s UDRP Supplemental Rules of the Czech Arbitration Court (CAC Supplemental Rules).

The Panel concurs with the view that a respondent’s default does not automatically result in a decision in favour of the complainant but that the complaint must build a case that the prerequisites for the requested transfer of the disputed domain name under the UDRP are fulfilled (c.f. e.g. CAC UDRP cases Nos. 100004 – novotelvietnam.com; 100095 – leros-boatyard.com and WIPO cases Nos. D2002-1064 – vanguar.com; D2003-0465 – berlitzsuchs.com; D2004-0383 – brookhogan.com).

11.
First, the correct respondent to the proceedings must be determined. The Amended Complaint was filed against “VALUE-DOMAIN COM / DIGIROCK, INC.”. The original Complaint was filed against “VALUE-DOMAIN COM” only. Only after the CAC informed the Respondent of the Registrar’s response that DIGIROCK, INC. acted as a reseller for the Registrar, the Complainant added “DIGIROCK, INC.” as second respondent.

11.1
It is apparent from the Who-Is entry provided with the Complaint that “VALUE-DOMAIN COM” acts as a so-called privacy proxy, meaning that “VALUE-DOMAIN COM” is only a front man or trustee for the real domain name owner. This view has been confirmed by the communication of the Registrar of 22 October 2009 to the CAC.

Neither the UDRP nor the UDRP-Rules deal with the rather recent phenomenon of privacy proxy services and, consequently, give no guidance on how to deal with the issues caused by such services (c.f. for a comprehensive discussion of the practical issues and legal implications of privacy proxy services in UDRP administrative proceedings the Panel Decision of Alan L. Limbury in the WIPO case No. D2009-0571 – jaylenoshow.com).

11.2
However, unlike in other reported cases (c.f. e.g. WIPO cases Nos. D2007-1854 – xenicalbuy.com and No. D2006-0975 – wwf.com), in the present case the proxy service provider did not reveal the true identity of the actual domain name holder during the proceedings.

The Panel has not to decide whether or not the offering of privacy proxy services are a good or bad thing. It suffices to state that, if one would force a complainant to file its complaint against the actual domain name holder, hiding behind a privacy proxy service, this would thwart the concept of UDRP proceedings. The present case shows how limited the possibilities for a complainant and the panel are to gather evidence with regard to the identity of a domain name holder. Therefore, it is this Panel’s view that, at least in cases were the privacy proxy service does not reveal the identity of the true domain name holder, the proper respondent is the domain name proxy service in question.

11.3
Having decided this, it remains for the Panel to determine whether only “VALUE-DOMAIN COM” or “VALUE-DOMAIN COM” and “DIGIROCK, INC.” together are the correct respondents in the present case. In the opinion of this Panel the Complainant was right to name both entities as the Respondent in the present proceedings. Even after the Panel’s enquiry and the Registrar’s response of 22 October 2009, the legal status of “VALUE-DOMAIN COM” and its relation to “DIGIROCK, INC.” remain unclear. In particular, whether “VALUE-DOMAIN COM” has legal personality on its own or whether it’s just a division or branch of “DIGIROCK, INC”. The Panel has exercised its discretion under section 10 UDRP-Rules and visited one of the links sent to the CAC by the Registrar, where allegedly the privacy proxy service agreement can be found (for the fact that a panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name c.f. e.g. WIPO cases Nos. D2002-0070 – nestlefoods.com; D2002-1038 – hescobastion.com; D2004-0014-hjta.com). The Panel has tried to understand the content of the Japanese document with the help of a computer generated translation from Japanese into English and it appears that this service agreement is concluded in the name of “VALUE-DOMAIN COM” and “DigiRock, Inc.”. The Panel concludes that both, “VALUE-DOMAIN COM” and “DIGIROCK, INC.” act as a privacy proxy service provider and, under the view expressed above, serve as proper respondents to the present proceedings.

12.
Next, the Panel must determine the correct language of the proceedings.

12.1
Starting point is Paragraph 11(a) UDRP-Rules, stating that unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.

12.2
The Complainant has not asserted that the Parties agreed to English as the language of the present proceedings. Consequently, the language of the proceedings must be determined with regard to the Registration Agreement (either because specific provisions are stipulated there or simply by looking at the language it is drafted in). As will be seen in the following, finding the correct Registration Agreement is not an easy task in the present case. This raises the question whether the panel can avoid this step by exercising its discretion under Paragraph 11(a) UDRP-Rules right away. In the view of the Panel the answer must be to the negative. When the Complainant states in its Nonstandard Communication of 6 November 2009 that “firstly, this would be unfairly that remain to took the complainant, which would have to expose the costs of a Japanese translation whereas the respondents could perfectly understand the complainant’s language”, this line of argument has to be rejected. Tying the language of the proceedings to the language of the registration agreement clearly aims for predictability for both parties to the proceedings with regard to the language of the proceedings. Firstly, the UDRP-proceedings completely rely on contractual provisions between private parties. It therefore complies with international comity to, in lack of express agreements between the parties, to determine the language with regard to the language of the arbitration agreement. This rule also serves the interests of a domain name holder who, with the registration of the domain name, potentially faces UDRP-proceedings from all over the world. If the draftsmen of the UDRP and the UDRP-Rules would have thought that convenience should be the determining factor for the language of the proceedings the UDRP-Rules would expressly state so. The Panel would, as a side remark, like to point out the fact that “convenience” would, even then, mean convenience for all involved persons, including the respondent ant the panel. In the understanding of the Panel UDRP-Proceedings are thought to be truly international and all languages are treated equally. Suggesting – as the Amended Complaint does – that a “non-Latin language” is per se inconvenient strikes the Panel as peculiar, as the same could be said by all users of non-Latin languages with regard to the suggestion that English should be the language of the proceedings. Since this would include Asia and the entire Arab world, this would affect a major part of the world’s population. From the viewpoint of a Panel, the Complaint could have much better been dealt with in Japanese as all the evidence (homepage of the respondent, links on that homepage, registration and privacy proxy agreement) are in Japanese and no proper translations have been provided.

In the light of the above, the Panel is of the opinion that the discretion under Paragraph 11(a) UDRP-Rules should only be used in exceptional cases.

12.3
The fact that this Panel, in the end, decided to exercise its discretion and to conduct the proceedings in English has its reason solely in the fact that the proper Registration Agreement cannot be determined in the present case and that the risks in this non-liquet situation must be allocated to the Respondent, since the choice of the Registrar and its resellers and privacy proxy service providers respectively were made by the Respondent.

With regard to the link provided by the Registrar and apparently leading to a registration agreement used by “VALUE-DOMAIN COM”, the Complainant correctly disputes that such registration agreement has been used for the Domain Name. The Panel also agrees with the Complainant that “Registration Agreement” under the UDRP-Rules means the agreement concluded between the registrar and the domain name holder, registrar being the ICANN accredited registrar. Since the Registrar Key-Systems is nowhere mentioned in the Japanese agreement that can be found under the link provided by Key-Systems GmbH, the Panel is not convinced that this agreement should be considered being the Registration Agreement.

The same arguments, however, apply to the registration agreement of Key-Systems that can be found on Key-Systems’s homepage and that was provided by the Complainant. The Key-Systems agreement is clearly directed to a contract with the end-costumer and not made for reseller arrangements, which apply in the present case. Also, the Complainant could not prove that the Key-Systems registration agreement was actually used for the Domain Name.

However, it is only the consequence from regarding “DIGIROCK, INC.” as co-respondent that one should look at the contractual relation between Key-Systems as the ICANN accredited registrar and DIGIROCK, INC as the nominal domain name holder. The Panel concludes from the submissions of Key-Systems GmbH that no expressed and formal, i. e. written, agreements have been entered into between Key-Systems GmbH and DIGIROCK, INC but that the registration process is handled through a automated computer platform system. Since Key-Systems GmbH themselves seem not to be proficient in Japanese but communicate with the CAC in English, the Panel exercises its discretion that – in absence of a written registration agreement that could be relied on – the language of the proceedings should be English.

Only as an excurse the Panel would like to point out to the fact that the reference made in the Amended Complaint to other WIPO cases where – “DIGIROCK, INC/VALUE-DOMAIN COM” were respondents and where the proceedings were conducted in English, is not a valid one. Firstly at least in one of the cases referred to by the amended complaint the registration agreement was uncontestedly made in English. Secondly, it has been stated above that the respondents in the present case are only nominal respondents due to the fact that privacy proxy services are used. At least in one other of the cited WIPO cases, the true domain name holder identified himself and answered in English. The Panel does not know whether the respondents in the cited case and in the present are the same or not, so no conclusions could be made with regard to the English proficiency of the true respondent in this case.

13.
The Panel now turns to the substantive questions of the case. In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) UDRP have been satisfied: (i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests with respect to the Domain Name; and (iii) The Domain Name has been registered and is being used in bad faith.

14.
The Complainant has provided sufficient evidence that it is the owner of the registered Community Trade Mark No. 002528461 “AIR FRANCE”. This trademark is confusingly similar to the Domain Name as required by Paragraph 4(a)(i) UDRP. In the view of the Panel it is the uncontested position under the UDRP that the top level domain, such as “.com” in the present case, has to be exclude while comparing the trademark with the domain name (c.f. e.g. CAC UDRP cases Nos. 100004 – novotelvietnam.com; 100084 – paiement-cic.com; 100074 – michelintires.info and WIPO cases Nos. D2000-1532 – brucespringsteen.com; D2002-0234 – herballife.net and DCC2003-0001 – officemax.cc).

Furthermore, the Panel concurs with the view of earlier decisions that a merely geographically descriptive term, such as the portion “asia” does not suffice to create a relevant distance between trademark and Domain Name since internet users (as “reasonable bystanders”) will understand “asia” as reference to a regional branch of the Complainant or Complainant’s web portal that focuses primarily on its costumers in Asia (c.f. CAC UDRP case No. 100004 – novotelvietname.com). Consequently, the Panel finds that the Domain Name and the Complainant’s trademark are confusingly similar.

15.
In the view of the Panel the Respondent does not have rights or legitimate interests in respect of the Domain Name according to Paragraph 4(a)(ii) UDRP. Although the onus of proof for this second requirement under the UDRP rests with the Complainant, the Panel follows the view that it is impossible for a complainant to prove a “negative fact”, which would require information that is primarily within the knowledge of the respondent. Therefore, a complainant is required to make out prima-facie case that the respondent lacks rights or legitimate interests and the onus of proof then shifts to the respondent to rebuke the complainant’s prima-facie case (c.f. e.g. CAC UDRP cases Nos. 100053 – enterprisecarrentalonline.info; 100084 – paiement-cic.com; 100092 – lerosmarina.com; 100099 – sublimedirections.com and WIPO cases Nos. D2003-0455 – croatiaairlines.com; D2004-0110 – belupo.com).

The Complaint has made out such a prima-facie case and stated, amongst others, that the Complainant is not aware of the fact that the Respondent is known by the term “AIR FRANCE” and that the Complainant has not licensed the right in the use of this designation to the Respondent. Paragraph 4(c)(iii) UDRP states that a use under legitimate interests would require that the Respondent makes a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Since the Complaint only provided for screen shots in Japanese and alleged computer translations hereof, the Panel visited the website offered under the Domain Name and had to learn that the website in question shows numerous hyperlinks, leading to clearly commercial erotic content. In the view of the Panel this amounts to a tarnishment of the Complainant’s trademark. Consequently, the Panel holds that the second requirement under the UDRP is fulfilled.

16.
The Panel is, furthermore, of the opinion that the Domain Name has been registered and is being used in bad faith according to Paragraph 4(a)(iii) UDRP. As Paragraph 4(b) UDRP clearly states, the examples mentioned under sub-sections (i) – (iv) are only examples and in the view of the Panel the offering of commercial hyperlinks leading to erotic content suffices to show the Respondent’s bad faith (c.f. e.g. WIPO case No. D2002-0545 – missoni.net).

17.
Since all three requirements under Paragraph 4(a) UDRP have been proven by the Complaint to the satisfaction of the Panel, the Complainant is entitled to a transfer of the Domain Name as requested in the Amended Complaint.
Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
ASIA-AIRFRANCE.COM Transferred to société Air France
Panellists
Name Dr. Uli Foerstl, LL.M.
Date of Panel Decision 2009-11-16
Annexes
Annex: English summary of the Panel Decision
The Complainant is a airline carrier company, acting globally and owner of a Community trademark “AIR FRANCE”. The Respondent acts as a reseller of domains for an ICANN accredited registrar and as privacy proxy service provider for the domain name holder. The true identity of the domain name holder has not been revealed throughout the proceedings. Under the disputed domain name a website in Japanese is offered that contains graphical elements similar to the web portal of the Complainant. On this website numerous hyperlinks are provided for that lead to commercial erotic content.

The Complainant filed its Complaint and Amended Complaint in English, insisting that the correct language of the proceedings should be English. This despite the fact that the Registrar wrote to the CAC that the Registration Agreement has been made in Japanese.

The Panel held that, since the true identity of the domain name holder was not revealed, the Respondent as privacy proxy service provider could be designated as respondent to the proceedings.

Since, due the specific fact of the case, the true Registration Agreement (and therefore also its language) could not be identified, the Panel exercised its discretion and held that the language of the proceedings shall be English.

The Panel followed previous UDRP decisions and held that the top level domain “.com” must not be considered while comparing trademark and domain name and that merely descriptive parts of the second level domain, such as the geographic component “asia” cannot create a relevant distance between a trademark and domain name.

The Panel also followed previous UDRP decisions stating that providing commercial hyperlinks on a website under the disputed domain name cannot create a “legitimate interest” or “fair non-commercial use”.

Finally, the Panel held that hyperlinks leading to commercial erotic content lead to the conclusion that the Domain Name was registered and is used in bad faith.

Consequently, the Panel order the transfer of the Domain Name to the Complainant.
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