WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WestJet Airlines Ltd. v. WhoisGuard Protected, WhoisGuard, Inc.

/ Vladimir Axdalinescu

Case No. D2018-2424

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard Inc. of Panama, Panama / Vladimir Axdalinescu of Craiova, Romania.

2. The Domain Name and Registrar

The disputed domain name <westjetairtickets.com> (the “Domain Name”) is registered with Namecheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 26, 2018.¹

The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.

The Center appointed A. Justin Ourso III as the sole panelist in this matter on December 1, 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

The Complainant is an international airline whose well-known brands include the WESTJET trademark at issue in this proceeding. The Complainant was founded in 1996; is publicly traded; and offers scheduled service to over 100 destinations in North America, including Central America, the Caribbean, and Europe. The Complainant owns a number of trademark registrations in Canada, the United States of America, and the European Union for its WESTJET trademark and for compound and composite marks including its WESTJET trademark, for services commonly associated with airlines, including a rewards program for purchasing tickets for air travel, the earliest of which trademarks was registered in 1997, and which are set forth in Annex 1 to this decision (collectively, the “WESTJET Trademarks”).

The Complainant registered the domain name <westjet.com> in 1995 and operates a web site accessed via this domain name that prominently features its WESTJET Trademarks. Through its web site, the Complainant offers various travel-related services, including booking services for the purchase of tickets for travel on its airline and for air cargo shipments.

The Complainant alleged in its Complaint and provided evidence that it has generated over USD 19 billion in revenue during the five-year period from 2012 through 2016. The Complainant alleged that it has enjoyed widespread recognition, alleging that it has received a number of awards in Canada.

The Respondent, which has not submitted a response to the Complaint, owns a registration for the Domain Name, <westjetairtickets.com>, which was registered on October 10, 2018, and was registered through a privacy service.

5. Parties’ Contentions

A. Complainant

Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:

1. It is the registered owner of the WESTJET Trademarks, by virtue of which it has rights in the WESTJET Trademarks.

2. The Domain Name incorporates its entire WESTJET trademark.

3. The inclusion of the generic Top-Level Domain (“gTLD") “.com” does not dispel confusion.

4. The inclusion of the non-distinctive word “airtickets” in the Domain Name does not dispel confusion.

5. The addition of the nondistinctive word “airtickets” to the WESTJET trademark in the Domain Name enhances, rather than dispels, confusion.

6. The Domain Name is confusingly similar to the WESTJET Trademarks in which the Complainant has rights.

Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:

7. The Complainant has not licensed or otherwise authorized the Respondent to register or use the WESTJET Trademarks, including in, or as part of, a domain name.

8. The Respondent registered the Domain Name without the permission of the Complainant.

9. The Domain Name initially resolved to a web site, prominently featuring the WESTJET Trademarks, that offered fake heavily discounted WestJet airline tickets, that contained a consumer survey, at the conclusion of completion of which a user was presented links for “special offers,” which redirected the user to third-party web sites selling various products.

10. After the Complainant sent a demand letter to the Registrant via the Registrar and the privacy service, the Domain Name resolved to a pay-per-click web site displaying a banner with “westjetairtickets.com” and air transportation-related titles, including “Manage Booking,” “Fly Booking,” “Online Air Ticket,” and “Air Booking Online Ticket,” and featuring (1) sponsored links to web sites offering services that compete with the Complainant, and (2) a search service by which users could search for competitors of the Complainant.

11. The initial Domain Name web site enabled the Registrant to reap a financial benefit by way of a referral fee and the next Domain Name web site is similarly designed to result in a financial benefit to the Registrant.

12. The Respondent’s use of the Domain Name in association with a consumer survey web site that promoted the sale of heavily discounted fake WestJet airline tickets in association with the WESTJET Trademarks undermines any claim of rights.

13. The Domain Name now resolves to a pay-per-click web site that features links to competitors of the Complainant, also undermining a claim of legitimate interests.

14. An unauthorized party cannot claim legitimate interests in a domain name that contains, or is confusing with, a complainant’s mark, because the activities of such a party cannot be said to constitute a bona fide offering of goods or services.

15. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services, and to conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate legitimate interests, an interpretation that is contrary to the Policy.

16. Using a domain name that contains a third-party trademark to point to a pay-per-click site does not constitute bona fide use of the domain name by a respondent.

17. Resolving a domain name to a consumer survey web site promising prizes and gifts in exchange for filling out a survey undermines a claim of rights.

18. No evidence suggests that the Respondent has ever used, or demonstrated preparations to use, the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services.

19. Under these circumstances, the Respondent cannot claim the benefit of the UDRP paragraph 4(c)(i), that before any notice to the Respondent of this dispute, the Respondent made use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

20. No evidence suggests that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the Domain Name, under the Policy, paragraph 4(c)(ii) or 4(c)(iii).

21. In light of the foregoing, the Respondent does not have rights or legitimate interests in the Domain Name, and is removed from the application of paragraph 4(c) of the Policy.

Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:

22. Generally, the Respondent registered and used the Domain Name to disrupt the business of a competitor and to intentionally attract traffic to a web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

23. Having the Domain Name resolve to (a) a pay-per-click web site featuring links with titles in the Complainant’s business areas and with links to competitors of the Complainant and (b) to a web site purportedly operated by the Complainant and offering heavily discounted fake airline tickets for sale qualified the Respondent as a competitor of the Complainant.

24. The use of the Domain Name in both cases was disruptive to the Complainant, because consumers were likely to be confused as to affiliation or sponsorship and because misdirection of consumers to the Respondent’s web site disrupted the Complainant’s business.

25. The purpose of the registration of the Domain Name was to piggyback on the goodwill associated with the WESTJET Trademarks to exploit, for commercial gain, Internet traffic properly destined for the Complainant.

26. Under these circumstances, it is reasonable to infer that the Respondent not only knew that this diversion would be disruptive, but also intended that it be so.

27. The Respondent registered the Domain Name purposefully to disrupt the business of the Complainant, a competitor, and deliberately used the Domain Name to disrupt the business of the Complainant.

28. By actively undertaking to divert Internet traffic to its site, the Respondent’s activities constituted prima facie evidence of bad faith under the Policy, paragraph 4(b)(iii).

29. Pointing a domain name to a pay-per-click web site that displays links to web sites of businesses that offer goods and services that compete with a complainant’s goods or services constitutes evidence of bad faith under the Policy, paragraph 4(b)(iii).

30. A respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with the complainant.

31. Under the Policy, paragraph 4(b)(iv), bad faith registration will be found where a respondent uses a domain name intentionally to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with a complainant’s mark as to source, sponsorship, affiliation, or endorsement.

32. The Domain Name is confusingly similar to the WESTJET Trademarks and has resolved to a
pay-per-click web site and a consumer survey web site, both of which were designed to deceive users as to source or sponsorship.

33. Accordingly, the Domain Name is likely to confuse potential consumers into believing the Respondent is affiliated with or endorsed by the Complainant and the web sites put the Respondent in a position to reap a financial benefit.

34. Accordingly, the Domain Name is being used intentionally to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark.

35. Pointing a domain name that is confusingly similar to a third-party trademark to a pay-per-click web site constitutes bad faith under the Policy, paragraph 4(b)(iv).

36. Bad faith exists where a respondent’s domain name has been parked at a registrar’s pay-per-click web site, and the registrar, not the respondent, reaps a commercial benefit, because the Policy does not require that the respondent enjoy the commercial gain, as long as a commercial gain is being realized in association with the use of the domain name, consistent with the principle that a respondent is responsible for the content of any webpage hosted at the disputed domain name.

37. Resolving a domain name to a consumer survey web site promising prizes and gifts in exchange for filling out a survey is evidence of bad faith.

38. Under these circumstances, the Respondent’s registration supports a finding of bad faith.

39. In addition to the foregoing evidence of bad faith, the surrounding circumstances further support a finding of bad faith.

40. Given the fame of the WESTJET trademark and the nature of the Respondent’s web sites, the only plausible conclusion is that the Respondent had actual knowledge of the WESTJET Trademarks at the time that the Respondent registered the Domain Name.

41. A respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith.

42. The Respondent also had constructive knowledge of the WESTJET trademark by virtue of the (registrations of the) WESTJET Trademarks.

43. A trademark registration provides constructive knowledge to third parties of a complainant’s rights.

The Complainant requested transfer of the Domain Name.

B. Respondent

The Respondent did not submit a response to the Complaint.

6. Discussion and Findings

The Effect of the Respondent’s Default

The Respondent has not responded to the Complaint. If a Respondent does not submit a response, the Panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The Panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).

Because the Complainant has the burden of proof, Rules, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; PVH CORP. v. Super Privacy Service LTD c/o, Dynadot, WIPO Case No. D2018-1013; RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190.

Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3.

A. Identical or Confusingly Similar

The Complainant’s trademark registrations in Canada, the United States of America, and the European Union establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s WESTJET trademark and to the compound WESTJET word trademarks, because of the predominance of the word “WestJet” in the compound word marks. The Domain Name incorporates the entire WESTJET trademark and the WESTJET trademark is easily recognizable within the Domain Name. WIPO Overview 3.0, section 1.7.

The inclusion of the gTLD “.com” does not dispel confusion, and is disregarded in determining confusing similarity, WIPO Overview 3.0, section 1.11.

Lastly, in the view of the Panel, the inclusion of the term “airtickets” in the Domain Name does not prevent a finding of confusing similarity.

B. Rights or Legitimate Interests

The Policy provides a non-exhaustive list of circumstances that, if a Panel finds proved, demonstrates that a Respondent has rights to, or legitimate interests in, a domain name for purposes of Paragraph 4(a)(ii) of the Policy:

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

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

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

The Complainant’s trademark rights precede the registration of the Domain Name. The Panel finds, on the basis of the Amended Complaint, that the Complainant has not licensed or otherwise authorized the Respondent to use the WESTJET trademark or to register or use the mark in a domain name. For these reasons, the Complainant has shown, prima facie, the second element – that the Respondent lacks rights or legitimate interests in the Domain Name.

Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

The Respondent here has not even submitted a response to the Complaint, much less submitted evidence to rebut the prima facie showing.

If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. WIPO Overview 3.0, section 2.1.

Additionally, the Complainant has alleged that the Respondent changed the content of the web site after sending a demand letter. Because the Respondent has not contested the allegations in the Complaint, and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts this allegation as proven. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.

The Panel infers, both from the content on both web sites and from the change in the content after the demand letter, an intent to deceive, which is not a legitimate interest for registering or using a domain name. The basis for this inference includes (1) a consumer survey that, instead of offering at its completion discounted tickets for the Complainant’s airline, provided links to third-party web sites selling various other products, and (2) a pay-per-click site displaying the confusingly similar Domain Name and presenting links to (a) web sites offering services that compete with the Complainant and (b) a search service by which users could search for competitors of the Complainant, either of which sites is sufficient unto itself to demonstrate a deceptive intent, not a legitimate interest. The use of a Domain Name that is confusingly similar to the Complainant’s trademark in either of these circumstances is an intentional infringement, not a bona fide offering of goods or services. WIPO Overview 3.0, section 2.9.

No evidence suggests that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the Domain Name under the Policy, paragraph 4(c)(ii) or (ii). Indeed, the evidence demonstrates an intent to make an illegitimate use of the Domain Name for commercial gain. WIPO Overview 3.0, sections 2.5.3 and 2.13.1.

Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel has determined above that the Domain Name is confusingly similar to the Complainant’s WESTJET trademark. In the view of the Panel, the inclusion of the term “airtickets” in the Domain Name enhances the likelihood of confusion, because it is likely to be considered by a consumer a site at which one can purchase the Complainant’s airline passenger tickets and air cargo tickets. The Complainant has alleged that the consumer survey site prominently displayed the Complainant’s WESTJET trademark and that the pay-per-click site prominently displayed the confusingly similar Domain Name, creating a likelihood of confusion with the Complainant; both sites were designed to deceive consumers as to the source of the sites; and both were intentionally designed to attract users to the sites for the Respondent’s commercial gain. Because the consumer survey site, instead of offering, at the completion of the survey, discounted tickets for the Complainant’s airline, provided links to third-party web sites selling other products, and the pay-per-click site displayed links to web sites offering services that compete with the Complainant, the Panel finds that (1) the Respondent used the Domain Name intentionally to attract Internet users to its site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the sites or the source of the services offered through the sites and (2) this is conclusive evidence that the Respondent is using the Domain Name in bad faith. Policy, paragraph 4(b)(iv); WIPO Overview 3.0, section 3.1.4.

Because the Domain Name is confusingly similar to the WESTJET trademark, and because the nature and use of the consumer survey site and the pay-per-click site demonstrated intentional deception, the Panel infers that the Respondent registered the Domain Name for the purpose of diverting customers from the Complainant, which necessarily disrupted the business of the Complainant. Policy, paragraph 4(b)(iii). Because the sites to which the links on the consumer survey site and the pay-per-click site led were competitors of the Complainant and because the sites attracted potential customers of the Complainant for commercial gain, the Panel finds that the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor within the meaning of the Policy, paragraph 4(b)(iii). WIPO Overview, section 3.1.3.

In short, in the circumstances of this case, the evidence of the use of the Domain Name in bad faith also compels a conclusion that the Respondent registered the Domain Name in bad faith.

In view of the foregoing, the Panel finds it unnecessary to consider the Complainant’s allegations of the “surrounding circumstances.”

The Complainant has proven the third element, namely, that the Domain Name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the Domain Name <westjetairtickets.com> be transferred to the Complainant.

A. Justin Ourso III
Sole Panelist
Date: December 9, 2018

Annex 1

¹ The Complainant amended the complaint by adding Vladimir Axdalinescu, the Registrant identified by the Registrar, as a Respondent in the caption of the Complaint. The Complainant did not also amend its Complaint to add the Registrant identified by the Registrar to its substantive allegation identifying the Respondent in Part II(b), paragraph 6, of the Complaint. In the view of this Panel, the preferred procedure is to identify the disclosed Registrant in the substantive allegations of the Complaint identifying the Respondent, as well as in the caption. Because the Complainant identified the disclosed Registrant in the caption of the Complaint, and because the Respondent did not object that the disclosed Registrant was not named in the substantive allegations, the Panel accepts the identification of the disclosed Registrant in the caption.