WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WestJet Airlines Ltd. v. Mara Albornoz, Westjet Discounts

Case No. D2017-1755

1. The Parties

Complainant is WestJet Airlines Ltd. of Alberta, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

Respondent is Mara Albornoz, Westjet Discounts of Tandil, Argentina.

2. The Domain Name and Registrar

The disputed domain name <westjetdiscounts.com> is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2017.

The Center appointed Gary J. Nelson as the sole panelist in this matter on October 25, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a company headquartered in Canada, and operates within the commercial airline industry. Complainant is the registered owner of many trademarks for or incorporating WESTJET. Complainant is the owner of at least two trademark registrations in Canada, at least one trademark registration in the United States, and at least one trademark registration in the European Union for the WESTJET mark. The earliest of Complainant’s trademark registrations dates back to 1997. Specifically, Complainant owns the following trademark registrations, among others:

Jurisdiction

Registration Number

Mark

Canada

TMA480424

WESTJET

Canada

TMA651001

WESTJET

United States of America

3559405

WESTJET

European Union

12810289

WESTJET

The disputed domain name was registered on September 12, 2016. The disputed domain name has been used in connection with a website displaying Complainant’s WESTJET trademark and purporting to offer discounted tickets for flights offered by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant is a leading international airline and was founded in 1996.

Complainant is a publicly traded company and the owner of numerous trademark registrations worldwide comprising entirely of, or containing, WESTJET.

Respondent registered the disputed domain name on September 12, 2016, without the permission of Complainant.

Respondent caused the disputed domain name to resolve to a website prominently featuring Complainant’s WESTJET trademarks together with an image of a WestJet airplane.

Respondent’s website was designed to defraud unsuspecting consumers by selling those consumers heavily discounted WestJet airline tickets purchased with stolen credit cards but never delivering the purchased airline tickets to the consumers.

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and has subsequently used and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal 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 shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns rights in the WESTJET trademark and that the disputed domain name is confusingly similar to Complainant’s WESTJET trademark.

Where a Complainant owns a nationally or regionally registered trademark or service mark, this fact is prima facie evidence that satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP Complaint. See Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, WIPO Case No. D2013-0219; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269.

In this case, Complainant owns at least two registrations in Canada, one registration in the United States, and one registration in the European Union, all for the WESTJET trademark. Complainant owns many other registrations around the world that incorporate the WESTJET trademark into the subject marks of those other registrations. Specifically, Complainant owns at least the following Canadian Trademark registrations for WESTJET: TMA480424 and TMA651001. Complainant owns at least the following United States registration for WESTJET: 3559405. Complainant owns at least the following European Union registration for WESTJET: 12810289. Accordingly, Complainant has established rights in its WESTJET trademark pursuant to Policy, paragraph 4(a)(i).

Where the relevant trademark (i.e., WESTJET) is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) typically do not prevent a finding of confusingly similarity under the first element. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075 (the addition of descriptive term “petroleum” to VALERO trademark being insufficient to avoid a finding of confusing similarity); Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287 (the addition of geographic term “Kenya” to ALLIANZ trademark being insufficient to avoid a finding of confusing similarity).

In this case, adding the descriptive word “discounts” to Complainant’s WESTJET trademark is insufficient to establish a domain name that is distinct from Complainant’s trademark and is insufficient to avoid a finding of confusing similarity.

Moreover, the addition of a generic Top-Level Domain (“gTLD”), such as “.com” in this case, is typically disregarded, thus insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919 (the “.com” portion of the disputed domain name being disregarded when conducting the confusingly similar analysis); Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087 (adopting the same rationale).

Complainant has proven the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “west,” or “jet” or “discounts” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its WESTJET trademark.

Complainant has provided unrebutted evidence showing that Respondent was operating a website at “www.westjetdiscounts.com” that featured Complainant’s WESTJET trademark and which allegedly offered discounted tickets for flights offered by Complainant. As asserted by Complainant, this appears to have been part of a fraudulent scheme. Such use of the disputed domain name to resolve to a website that misleadingly gives the overall impression of some sort of connection with Complainant cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.

Furthermore, using another’s trademark in a domain name for the purpose of attracting Internet users to a website where that trademark owner’s trademark is being intentionally and illegitimately used to appear as if it were a website maintained by that same trademark owner cannot establish a legitimate noncommercial or fair use, and cannot establish rights or a legitimate interest in the disputed domain name.

Also, the use of Complainant’s WESTJET trademark to lure unsuspecting Internet users to a website featuring the WESTJET trademark for the illicit purpose of obtaining confidential information and/or payments from these same Internet users can never be a bona fide offering of goods or services, or serve as a legitimate noncommercial or fair use of Complainant’s trademark.

Moreover, Respondent’s decision to add a common descriptive phrase (e.g., “discounts”) to a well-known trademark does not instill Respondent with rights or legitimate interests in the corresponding domain name. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstore.com> and <chanelfashion.com> to the complainant).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent chose the disputed domain name with full knowledge of Complainant’s rights in the WESTJET trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was most likely aware of the rights owned by Complainant in WESTJET when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent was directly targeting Complainant on its website as part of the unauthorized services it offered, as evidenced by the excessive use of Complainant’s WESTJET trademark on each webpage associated with the disputed domain name. The Panel finds the above to be convincing evidence of bad faith, and is sufficient to establish the bad faith registration and use of the disputed domain name.

Further supporting the conclusion that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the WESTJET trademark is the fact Respondent appears to have systematically used the corresponding website to fraudulently sell fake discounted tickets for WestJet Airlines. This illegitimate activity is conclusive evidence that Respondent registered and is using the disputed domain name in bad faith.

Furthermore, the Panel finds that the use of the disputed domain name falls within one of the express examples of bad faith identified in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to misleadingly hold itself out as being affiliated with Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <westjetdiscounts.com> be transferred to Complainant.

Gary J. Nelson
Sole Panelist
Date: October 31, 2017