The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keltie LLP, United Kingdom.
The Respondent is Mohit Bajaj of Lucknow, Uttar Pradesh, India. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 25, 2016, 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.
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 of the Complaint, and the proceedings commenced on August 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. The Respondent did not submit any response save for its email communication of July 30, 2016. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on August 24, 2016.
The Center appointed John Swinson as the sole panelist in this matter on August 31, 2016. 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 Skyscanner Limited, a company incorporated in the United Kingdom. The Complainant is the creator of a travel search and price comparison website hosted at a range of domains in various jurisdictions, including .
The Complainant owns numerous trade mark registrations worldwide for SKYSCANNER and variations thereof, including:
- International Trade Mark Registration No. 1030086 for SKYSCANNER, registered December 1, 2009; and
- Indian Trade Mark Registration No. 1890840 for SKYSCANNER, registered December 2, 2009.
The Respondent is Mohit Bajaj of India. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Names as follows:
- on February 25, 2016; and
- on May 20, 2016.
The websites at the Disputed Domain Names appear to provide a variety of travel services including car rental, transport booking (including flight booking), hotel booking, currency exchange and visa/passport assistance. The websites display details of a company called “Skyscanner Tourism Pvt. Ltd.”, describing the company as a “unit of Skyscanner Group”. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant owns numerous trade mark registrations for SKYSCANNER and variations thereof, including in India. There are previous UDRP decisions which recognize the Complainant’s rights in the SKYSCANNER trade mark.
The Disputed Domain Names incorporate the SKYSCANNER trade mark in its entirety. The additional “tourism/s” element is generic and descriptive of the industry in which the parties operate, and does not distinguish the Disputed Domain Names from the SKYSCANNER trade mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Names for the following reasons:
- The Respondent does not own any rights in trade marks comprising all or part of the Disputed Domain Names.
- The term “Skyscanner” is not descriptive in any way, nor does it have any generic meaning.
- The Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration.
- To the best of the Complainant’s knowledge, the Respondent is not commonly known as “Skyscanner Tourism”.
- The services being advertised on the websites at the Disputed Domain Names fall within the classes of services covered by the SKYSCANNER trade mark. The Respondent is creating consumer confusion and misleadingly diverting the Complainant’s customers for commercial gain.
Registered and Used in Bad Faith
The Complainant’s registered trade mark rights pre-date the registrations of the Disputed Domain Names. As such, the Respondent must have been aware of the Complainant’s reputation (including in India) and trade mark rights in SKYSCANNER at the time it registered the Disputed Domain Names.
In correspondence between the parties pre-dating the Complaint, the Respondent has made no attempt to arrive at an amicable resolution of the matter. The Respondent claims that its use and registration of the Disputed Domain Names is legitimate, on the basis that it has a company in India which incorporates by the Disputed Domain Names. The Complainant submits that this is irrelevant as the Indian Government did not search the Trade Marks Register before allowing incorporation of the Indian company and the incorporation does not convey any rights on the Respondent under the Policy.
The Respondent uses the Disputed Domain Names to attract the Complainant’s customers to the Respondent’s websites for commercial gain. This use of the Disputed Domain Names creates a likelihood of confusion with the SKYSCANNER trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. The Respondent is intentionally trading off the goodwill associated with the Complainant’s SKYSCANNER trade mark. This cannot constitute a bona fide offering of goods or services. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
In an email dated July 30, 2016, the Respondent states the following.
“We notify that Skyscanner Tourism Pvt. Ltd. is an Indian BRAND and registered under ministry of cooperate affairs in INDIA.
Note:- S is different brand which is based in US and other related countries and Skyscanner Tourism Pvt. Ltd. is an Indian BRAND Both are registered BRANDS as per there countries and working in different areas as well.
Please, notify that we are not in tend to effect any brand name etc. and working in different areas etc.”
The Respondent attached a Certificate of Incorporation for Skyscanner Tourism Private Limited dated April 23, 2015 and a card issued by the Income Tax Department of the Government of India also dated April 23, 2015 in the name of Skyscanner Tourism Private Limited. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a formal Response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the SKYSCANNER trade mark.
The Panel has verified that the Complainant has rights in the SKYSCANNER trade mark (as have previous panels, see, e.g., Skyscanner Limited v. Ali Karatas, Fast Line (UK) Ltd,WIPO Case No. D2016-0176 and Skyscanner Limited v. Basit Ali,WIPO Case No. D2012-1983). The Panel also finds that the SKYSCANNER trade mark is widely known in the travel and tourism industry.
The Disputed Domain Names are a combination of the SKYSCANNER element with the descriptive term “tourism/s”. In this case, the designation “.com” at the end of the Disputed Domain Names is irrelevant in assessing confusing similarity under the Policy and is thus ignored.
The Panel finds that SKYSCANNER remains the dominant element in the Disputed Domain Names. It is well established that the addition of a descriptive term (such as “tourism/s”) to a trade mark does not prevent confusingly similarity (see, e.g., The Drambuie Liqueur Company Limited v. DVLPMT MARKETING, INC,WIPO Case No. D2015-0039). The addition of the descriptive term “tourism/s” does nothing to prevent the confusing similarity of the Disputed Domain Names with the SKYSCANNER trade mark. The fact that the Disputed Domain Names incorporate a descriptive term which relates to the industry in which the Complainant operates does nothing to distinguish the Disputed Domain Names from the Complainant’s mark.
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- There is no evidence that the Complainant has authorized, licensed or permitted the Respondent to register or use the Disputed Domain Names or the SKYSCANNER trade mark.
- There is no evidence that the Respondent is commonly known by the Disputed Domain Names. A Certificate of Incorporation for Skyscanner Tourism Private Limited has been provided by the Respondent. However, the Panel finds that this certificate alone does not necessarily show legitimacy, particularly in the absence of any evidence of trading or public recognition (see, e.g., Land Rover v. Liumei,WIPO Case No. D2011-1402 and Alstom and ABB Asea Brown Boveri Ltd v. Claudette Drakes, Name Equities,WIPO Case No. D2014-1489). Further, no evidence has been provided linking the Respondent to the company Skyscanner Tourism Private Limited.
In light of the substantial reputation of the Complainant and the SKYSCANNER trade mark, the Panel is of the view that the Respondent is using the Disputed Domain Names to create confusion among the users of the Complainant’s services in order to divert traffic to the Respondent’s websites (where the Respondent offers services which compete directly with the services offered by the Complainant). The Panel finds that the Respondent’s use of the Disputed Domain Names is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
In the absence of any further showing of rights or legitimate interests from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
According to the Registrar, the Respondent became the registrant of the Disputed Domain Names in 2016. The Complainant and the SKYSCANNER trade mark were widely known by this time, particularly in the travel and tourism industry. The Panel finds, in the circumstances of the present case, that the Respondent either knew or should have known of the Complainant’s SKYSCANNER trade mark, and that the Disputed Domain Names were registered in bad faith.
The websites at the Disputed Domain Names appear to provide a variety of travel services, many of which compete with directly with the services provided by the Complainant. The predominant view of UDRP panels is that commercial use of a domain name deemed to have been registered in bad faith, on a website offering competing products or services to those protected under a complainant’s established trade mark, constitutes use of the domain name in bad faith (see, e.g., WGCZ s.r.o. v. Italo Fabris,WIPO Case No. D2016-1083 and MarkMonitor Inc., Thomson Reuters Canada Limited, Thomson Reuters Organization LLC, and Thomson Reuters Corporation v. Domain Admin, E-Promote,WIPO Case No. D2016-0693). Here, the Panel finds that the use of the Disputed Domain Names by the Respondent constitutes bad faith.
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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, and , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: September 14, 2016
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