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 Domain May Be for Sale, Check A Domain Admin, Domain Registries Foundation of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request of clarification by the Center, Complainant filed an amendment to the Complaint on September 12, 2018.
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 September 18, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2018.
The Center appointed Richard W. Page as sole panelist in this matter on October 30, 2018. The Panel finds that it was properly constituted. Each member of 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 a United Kingdom company and provides an online search engine relating to travel.
Complainant is the owner of numerous trademarks including International Trade Mark Registration No. 900393 for SKYSCANNER (registered on March 3, 2006) and International Trade Mark Registration No. 1030086 for SKYSCANNER (registered on December 1, 2009), which are two of a total of 91 registrations worldwide (collectively the “SKYSCANNER Mark”). Prior UDRP decisions have found that Complainant has rights in the SKYSCANNER Mark.
The Skyscanner website now attracts 60 million visits per month and the SKYSCANNER smart device app has been downloaded 70 million times. Complainant’s services are available in over thirty languages and in seventy currencies.
The Disputed Domain Name was registered on May 14, 2018. The Disputed Domain Name resolves to a parking page with several pay-per-click links. 5. Parties’ Contentions A. Complainant
Complainant submits that the Disputed Domain Name is similar to the SKYSCANNER Mark because it includes the entirety of the SKYSCANNER Mark with the addition of the phrase “flight” which is non˗distinctive in the travel services line of commerce.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further alleges that Respondent does not own any registered rights in any trademarks which contain part or all of the Disputed Domain Name. Complainant has not given its consent for Respondent to use the SKYSCANNER Mark in the Disputed Domain Name or otherwise. Complaint alleges that Respondent is not commonly known as “Skyscanner Flight”. Respondent has directed the Disputed Domain Name to resolve to a parking page with several pay-per-click links.
Complainant argues that aside from the generation of pay-per-click revenue, there is no indication that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods and services.
Complainant further argues that, given the famous nature of the SKYSCANNER Mark and the fact that no other individual or business owns trademark rights (whether registered or unregistered) in the SKYSCANNER Mark, not only is it likely that Respondent was aware of Complainant’s rights prior to registering the Disputed Domain Name, but it is inevitable that visitors to the Disputed Domain Name (once it resolves to an active website) would mistakenly believe there to be an association with Complainant.
Complainant contends that its registered rights date back to 2002, Complainant submits that Respondent must have been aware of the reputation of Complainant’s business under its SKYSCANNER Mark at the time Respondent registered the Disputed Domain Name. At which stage Complainant already enjoyed global success. As such, Complainant asserts that Respondent filed the Disputed Domain Name in bad faith.
Complainant further contends that Respondent’s website points to a parking page containing pay-per-click links to third party businesses providing travel arrangement services, in and of itself, pay-per-click advertising is a commercial use of the Disputed Domain Name. Complainant further contends that the pay-per-click links related to services protected by Complainant rights and pay-per-click advertising in this manner must constitute bad faith. As such, Complainant submits that Respondent uses the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet uses to the website by creating a likelihood of confusion with the SKYSCANNER Mark as to the source, sponsorship, and affiliation of the website to which the Disputed Domain Name points.
Complainant concludes that Respondent has been named in six UDRP decisions since 2015. All cases resulted in the transfer of the domain names away from Respondent. This shows that Respondent is engaged in a pattern of bad faith registrations. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a domain name dispute proceeding, but if respondent fails to do so, asserted facts that are not unreasonable will be taken as true and respondent will be subject to the inferences that flow naturally from the information provided by complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SKYSCANNER Mark in which Complainant has rights; and,
ii) that Respondent has no legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the SKYSCANNER Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
The Panel finds that Complainant has established a prima facie case for the validity of the SKYSCANNER Mark and for Complainant’s rights in that trademark. Respondent has not rebutted this showing. Therefore, Complainant has enforceable rights in the SKYSCANNER Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the SKYSCANNER Mark pursuant to paragraph 4(a)(i) of the Policy.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the SKYSCANNER Mark is incorporated into the Disputed Domain Name with the addition of the word “flight”. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common or descriptive word, it is still confusingly similar to the trademark as such addition does not eliminate the finding of confusing similarity. See, Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
The Panel notes that the entirety of the SKYSCANNER Mark is incorporated into the Disputed Domain Name and that the addition of the word “flight” in the travel industry is non-distinctive.
Therefore, Complainant has established the required elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 SKYSCANNER Mark.
Complainant alleges that Respondent does not own any registered rights in any trademarks which contain part or all of the Disputed Domain Name. Complainant has not given its consent for Respondent to use the SKYSCANNER Mark in the Disputed Domain Name or otherwise. Complaint alleges that Respondent is not commonly known as “Skyscanner Flight”. Respondent has directed the Disputed Domain Name to resolve to a parking page with several pay-per-click links.
Complainant argues that aside from the generation of pay-per-click revenue, there is no indication that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods and services.
The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the Disputed Domain Name and that Respondent has chosen not to respond.
Therefore, the Panel finds that Complainant has established the necessary elements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the SKYSCANNER Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the SKYSCANNER Mark in a corresponding domain name, provided that you [Respondent] have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the SKYSCANNER Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant contends that Respondent’s website points to a parking page containing pay-per-click links to third party businesses providing travel arrangement services and that the pay-per-click links are related to services protected by Complainant rights. As such, Complainant submits that Respondent uses the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet uses to the website by creating a likelihood of confusion with the SKYSCANNER Mark as to the source, sponsorship, and affiliation of the website to which the Disputed Domain Name points.
Complainant concludes that Respondent has been named in a number of previous UDRP decisions since 2015. All cases resulted in the transfer of the domain names away from Respondent. This shows that Respondent is engaged in a pattern of bad faith registrations.
The Panel finds that Complainant has established the elements of bad faith in paragraph 4(b)(iv) of the Policy. Therefore, Complainant has satisfied the requirements of paragraph 4(a)(ii) 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 name be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: November 5, 2018
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