The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper Scotland LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Basit Ali of West Yorkshire, West Midlands, London and Birmingham, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 8, 2012. On October 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2012, 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 for the disputed domain name.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 8, 2012. 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 a company incorporated in the United Kingdom in 2001, which, since 2002, has been operating websites under its trade mark SKYSCANNER in connection with flight search and price comparison services. Currently, these websites attract circa 30 million visits per month.
The Complainant is the proprietor of United Kingdom trade mark registration No. 2,313,916, for the trade mark SKYSCANNER in connection with the services which it offers, and has provided the Panel with details of another 15 trade mark registrations in 11 jurisdictions.
The disputed domain names were registered on February 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name merely adds a non-distinctive descriptive element, “flights”, to its SKYSCANNER trade mark, and is confusingly similar to the SKYSCANNER trade mark.
The Complainant contends that the disputed domain name merely adds a non-distinctive geographical indicator, “uk” to its SKYSCANNER trade mark, and is confusingly similar to the SKYSCANNER trade mark.
The Complainant alleges that the Respondent has, so far as it is aware, no registered rights in any trade marks which comprise part or all of the disputed domain names; was aware of the Complainant’s SKYSCANNER trade mark when he registered the disputed domain names; and cannot use the disputed domain names in connection with any bona fide offering of flight search and price comparison services (which it does). The Complainant has drawn the Panel’s attention to a number of prior UDRP decisions, to the effect that such lack of possibility to offer bona fide goods and/or services is sufficient to prove a respondent’s lack of rights to and legitimate interests in a domain name.
The Complainant has provided the Panel with details of the Respondent’s use of the disputed domain names in connection with the same services as those offered by the Complainant, and contends that this is sufficient to prove registration and use of the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant or be cancelled:
(i) The disputed domain names are 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 in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view, and, considers these indicators to be irrelevant in the present case.
The Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its “Skyscanner” websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation among potential customers. It is well-established in prior decisions under the UDRP that the mere addition of either descriptive or geographical elements to a trade mark is insufficient to avoid a finding of confusing similarity between a domain name and the trademark in question. Accordingly, in the circumstances of the present case, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with both disputed domain names. B. Rights or Legitimate Interests
The Panel has concluded from the material presented that it is at least probable that the Respondent knew of the reputation of the Complainant’s SKYSCANNER trade mark at the time that it registered the disputed domain names. It is well-established in prior decisions under the UDRP, for example in Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian,WIPO Case No. D2001-0879, that a knowingly-infringing use of a trade mark to offer goods and services is not a bona fide offering of goods and services under the policy. The Panel agrees with this well-established view and, in the circumstances of the present case, finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy in connection with both disputed domain names. C. Registered and Used in Bad Faith
The Panel agrees with the UDRP panel in Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763, that a finding of bad faith may be made where a respondent knew or should have known of the registration and/or use of the complainant’s trade mark prior to registering a domain name, and finds, in the circumstances of the present case, that the Respondent either knew or should have known of the Complainant’s trade mark, and that the disputed domain names were registered in bad faith.
Following the predominant view of panels in previous UDRP decisions that use of a website operated under a disputed domain name, found to have been registered in bad faith, to promote competing goods or services to those protected under a complainant’s established trade mark rights is clear evidence of use of the disputed domain name in bad faith. Here, the Panel agrees with the Complainant that the use of the disputed domain names by the Respondent in the present case constitutes use in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy in connection with both disputed domain names. 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, and , be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: November 22, 2012
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