WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Webjet Marketing Pty Ltd v. Host Master, 1337 Services LLC

Case No. D2020-2976

1. The Parties

Complainant is Webjet Marketing Pty Ltd, Australia, represented by SILKA AB, Sweden.

Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2020, 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 Complainant on November 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 16, 2020.

The Center verified that the Complaint together with the amendment to 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 November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2020.

The Center appointed John C. McElwaine as the sole panelist in this matter on December 19, 2020. 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 an online travel agency based in Australia.

Complainant is the owner of the following trademark registrations relevant to this proceeding:

- WEBJET (and Design) – New Zealand trademark registration number 1106279, registered May 3, 2019 in class 39 and 43;
- WEBJET – Canada trademark registration number 1531327, registered on April 23, 2013 in class 39 and 43;
- WEBJET (and Design) – New Zealand trademark registration number 762560, registered on May 15, 2008 in class 39 and 43;
- WEBJET – New Zealand trademark registration number 762558, registered on May 15, 2008 in class 39 and 43;
- WEBJET – United States of America trademark registration number 78/709874, registered on May 15, 2007 in class 39 and 43;
- WEBJET (and Design) – Australia trademark registration number 1054953, registered on December 19, 2005 in class 39 and 43;
- WEBJET – Australia trademark registration number 863312, registered on October 2, 2001 in class 39 and 42;
- WEBJET – International Registration number 920652, registered on January 29, 2007 in class 39 and 43.

On December 14, 2019, the Domain Name was registered with the Registrar. The Domain Name currently resolves to a website purporting to be an online travel agency.

5. Parties’ Contentions

A. Complainant

Complainant asserts to have been established in 1998 and has grown to be the leading online travel agency in Australia and New Zealand. Specifically, Complainant’s website, located at “www.webjet.com.au”, offers online software services allowing customers to compare, combine and book the domestic and international travel flight deals, hotel accommodations, holiday package deals, travel insurance and car rentals on a worldwide basis.

With respect to the first element of the Policy, Complainant asserts it is the owner of the registered trademark WEBJET as a word mark in numerous of countries, including in Australia. These trademark registrations were obtained prior to the Domain Name registration. In addition, Complainant asserts unregistered trademark rights through its use of the mark WEBJET on social media and on its website. Collectively, these registered and unregistered trademark rights in the mark WEBJET are referred to as the “WEBJET Mark.” Complainant points out that the Domain Name incorporates the entirety of Complainant’s WEBJET Mark. Complainant further contends that the addition of the term “flights” does not lessen the likelihood of confusion.

With respect to the second element of the Policy, Complainant alleges that there is no relationship between Complainant and Respondent, and that Complainant has not licensed Respondent or authorized Respondent to register the Domain Name. Further, Complainant asserts that the Domain Name is pointing to a competing website named “Webjet Flights Australia” offering the same online travel agency services as Complainant. Complainant asserts that links to the social media sites are broken and not functioning which further supports that the website is not authentic. Complainant also asserts that the overall feel of the website is that the website is associated with Complainant and that there is no doubt that Respondent registered the Domain Name to exploit the goodwill of Complainant’s WEBJET Mark. Complainant further contends that the bottom of the website site states “Webjet Flights” but there is no company in Australia called “Webjet Flights”. As such, Complainant contends that Respondent cannot possess rights or legitimate interests in the Domain Name.

With respect to the third element of the Policy, Complainant similarly asserts that the WEBJET Mark is well known, particularly in Australia, and that Respondent has attempted to attract, for commercial gain, Internet users by confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of products or services thereon. Complainant concludes that this demonstrates that Respondent must have not only been aware of Complainant’s mark, but that this behavior also constitutes strong evidence of registration and use of the Domain Name in bad faith under the Policy.

In addition, after uncovering the true identity of Respondent, Complainant amended its Complaint to assert that Respondent had been involved in at least 26 other UDRP cases where a transfer was ordered. It was alleged that this fact demonstrates a pattern of abusive behavior by Respondent which further strengthens the fact that Respondent is a notorious cybersquatter that registered and used the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of at least seven trademark registrations in multiple countries containing the word “webjet”.

It is well-established that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s WEBJET mark in its entirety, as the dominant element. The addition of the dictionary term “flights” does not prevent a finding of confusing similarity between the Domain Name and the WEBJET mark.

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s WEBJET mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

Here, Complainant asserts that Respondent is not authorized to have registered the Domain Name and set up a website offering the same online travel services as Complainant and purporting to be “Webjet flights Australia online”. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Nevertheless, under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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 Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions.

As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “WebJet Flights”. In fact, to the contrary, the WhoIs information indicates that Respondent’s name is “Host Master, 1337 Services LLC.”

Complainants also assert that the Domain Name resolved to a website that imitates Complainant by using Complainant’s marks and the feel of Complainant’s own website and brand. Respondent has not submitted any response to rebut these allegations.

The Panel notes that the website displayed at the Domain Name is intended to lead visitors to believe that it is Complainant or that it is an entity related to Complainant. Complainant provided evidence of screenshots where Respondent states:

“The main focus of the Webjet flights is to ensure the highest quality of your holidays. It doesn't matter where you are going or when, our system is able to make your dreams come true anytime. We achieve this goal with good care and respected attitude, therefore it's really easy to save the money with us. We cover everything you need to have a nice time during your trip. This includes the cheapest flight tickets you could get and many other perfect deals from the best budget-friendly airlines.”

In addition to the evidence of Respondent’s website’s content provided by Complainant in Annex 8, the Panel reviewed that website that resolves at the Domain Name, which is now forwarded to the URL “www.flyaustralia.org” and contains the following relevant content:

“Webjet flights Australia is an online travel agency that enables customers to find the best flight deals around the world. Webjet is one of the most flexible and comfortable system to use because of all the functions and services it has. Customers can find and compare flight deals with different airlines and choose the best option for themselves in the easiest way. Once you try it, you’ll never stop using it and there are plenty of reasons for it:

Reliability
Webjet is an Australian agency based in Melbourne already for twenty years. Your personal information is secured and safe transactions are guaranteed with them.

24/7 Customer Support
Webjet support team is 24/7 reachable and ready to help. A team of professionals will provide you with competent information whenever you need it.

The best flight deals
You can find and compare prices of every existing airline Webjet domestic flights around the world. All you have to do is to select departure and arriving cities with dates and website will offer you the best flight deals.”

The registered WebJet airplane logo is prominently displayed at the top of this website.There is no disclaimer on the website disclosing any type of relationship between Complainant and Respondent.

The Panel finds that the use of the Domain Name in this manner to divert Internet traffic or to confuse and deceive the Internet users is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka, WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.) Without a response from Respondent justifying its use of the Domain Name as authorized by Complainant or as fair use, the Panel cannot find Respondent has a legitimate interest.

In addition, where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0.

In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainants, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the WEBJET mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.

As discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s WEBJET mark, copied Complainant’s airplane logo and the feel of Complainant’s website. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the WEBJET mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.

Lastly, the Panel notes multiple adverse UDRP decisions issued against Respondent as pointed out by Complainant in its amendment to the Complaint. The Panel further notes among the numerous adverse ruling against Respondent, several include examples of trademark-abusive domain names. See e.g., WhatsApp Inc. v. Host Master, 1337 Services LLC, WIPO Case No. D2020-1818 (finding bad faith registration of <whatsappguy.com> based in part on a finding that the respondent “has acted in a similar pattern of conduct which is shown by other domain name registrations made by the respondent incorporating well-known trade marks, such as <netflix.bio>, <businessinsider.link> and <tinder.wiki>”). Accordingly, based on the evidence of record, the Panel finds that Respondent has engaged in a pattern of abusive domain name registration and this pattern is further evidence of Respondent’s bad faith in regard to Respondent’s registration and use of the Domain Name.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <webjetflights.com>, be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: January 2, 2021