WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WestJet Airlines Ltd. v. Wang Xiao Feng

Case No. D2018-1035

1. The Parties

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

The Respondent is Wang Xiao Feng of Shenzhen, Guangdong, China, self-represented.

2. The Domain Names and Registrar

The disputed domain names <westjet.shop> and <westjet.site> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On May 18, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 28, 2018, the Complainant confirmed its request that English be the language of the proceeding.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. On June 2, 2018, the Respondent requested Chinese be the language of the proceeding. The Respondent submitted a further communication to the Center on June 19, 2018, indicating its willingness to transfer the disputed domain name. On the same day, the Center sent the Parties a communication regarding possible settlement. The Complainant did not request suspension of the proceeding. On June 22, 2018, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Sok Ling MOI as the sole panelist in this matter on June 26, 2018. 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

Founded in 1996, the Complainant is a commercial airline company listed on the Toronto Stock Exchange. It offers scheduled air transport service to more than 100 destinations in North America, Central America, the Caribbean and Europe as well as to more than 175 destinations in over 20 countries through its airline partnerships. Between 2012 and 2016, the Complainant generated over CAD 19 billion in revenue. In 2017, the Complainant was voted Best Airline in Canada by TripAdvisor.

The Complainant is the proprietor of numerous trade mark registrations for WESTJET in various jurisdictions, including the following:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Canada

WESTJET

TMA480424

August 14, 1997

Canada

WESTJET

TMA651001

October 20, 2005

United States of America

WESTJET

3559405

January 13, 2009

European Union

WESTJET

012810289

November 7, 2014

The Complainant is also the registrant of the domain name <westjet.com>, at which it operates its official website offering travel-related services including airline booking services.

The disputed domain name <westjet.shop> was registered on March 23, 2017 while the disputed domain name <westjet.site> was registered on April 24, 2018. According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain names do not resolve to any active website and appear never to have done so in the past.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <westjet.shop> and <westjet.site> are confusingly similar to its WESTJET trade marks. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent, presumably a Chinese national, did not file a formal response by the due date of June 21, 2018. However, the Respondent did send an email to the Center on June 19, 2018, indicating that the disputed domain names have never been used in connection with services related to the Complainant’s business. In the same email, the Respondent also expressed its willingness to sell the disputed domain names to the Complainant for an unspecified sum of money.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 proceeding.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent requested for Chinese to be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script;

(b) the Respondent has registered other domain names that contain third party trade marks in Latin characters, such as <lionair.shop>, <airnewzealand.shop> and <airnewzealand.online>;

(c) the Respondent has replied in reasonably proficient English (via emails of April 27, 2018 and April 29, 2018) to the Complainant’s cease-and-desist letter issued in English (via emails of March 23, 2018 and April 27, 2018).

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate their arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

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

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

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

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

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in WESTJET by virtue of its use and registration of the same as trade marks.

Each of the disputed domain names <westjet.shop> and <westjet.site> incorporates the Complainant’s trade mark WESTJET in its entirety. The addition of the generic Top-Level Domain (“gTLD”) does not in this case impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.

Consequently, the Panel finds that the disputed domain names are identical to the Complainant’s trade marks.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the WESTJET trade marks or to seek registration of any domain name incorporating the trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “westjet”.

As the disputed domain names do not resolve to any active websites, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names. Since the Respondent has failed to offer any clear explanation for his registration of the disputed domain names, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel notes that as of the date of this decision, the disputed domain names do not resolve to any active websites. Nevertheless, from the inception of the UDRP, panels have held that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, third Edition (“WIPO Overview 3.0”), section 3.3.

The Panel accepts that the Complainant and its trade marks WESTJET enjoy widespread recognition and a significant Internet presence. A cursory Internet search would have disclosed the WESTJET trade marks and the Complainant’s official website at “www.westjet.com”. A strong presumption arises that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain names. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainant, the Respondent had immediately offered to sell the disputed domain names to the Complainant upon receiving the Complainant’s cease-and-desist letter. Indeed, the Respondent had asked for a price of USD 20,000 for the disputed domain names — this is obviously in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. The circumstances under paragraph 4(b)(i) of the Policy clearly apply.

Furthermore, as indicated by the Complainant, the Panel notes that the Respondent has registered other domain names which contain third party brand names, such as <lionair.shop>, <airnewzealand.shop> and <airnewzealand.online>. This pattern of conduct suggests that the Respondent is engaged in cybersquatting activities, and has in all likelihood registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in corresponding domain names. The circumstances under paragraph 4(b)(ii) of the Policy also appear to apply.

In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 names <westjet.shop> and <westjet.site> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: July 24, 2018