The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Keltie LLP, United Kingdom.
The Respondent is Grigori Kokchyan of Van Nuys, California, United States of America. 2. The Domain Name and Registrar
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 October 26, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 31, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 1, 2018.
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. Two emails were received from the Respondent. No formal Response was filed with the Center.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 5, 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 operates the website at , which provides travel search services in over thirty languages and seventy currencies. This website attracts 60 million visits per month, and the Complainant’s SKYSCANNER smart device app has been downloaded 70 million times.
The Complainant is the proprietor of the following trademark registrations (the “SKYSCANNER trademark”):
- the International trademark SKYSCANNER with registration No. 900393, registered on May 15, 2007, for services in International Classes 35, 38 and 39;
- the International trademark SKYSCANNER with registration No.1030086, registered on December 1, 2009 for services in International Classes 35, 39 and 42; and
- the International trademark SKYSCANNER & Cloud device with registration No. 1133058, registered on October 22, 2013, for services in International Classes 35, 38 and 39.
The disputed domain name was registered on August 20, 2018. At the time of the filing of the Complaint, the disputed domain name resolved to a website offering the same services as those of the Complainant and included the Complainant’s trademark and logo on its landing page. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name incorporates the Complainant’s SKYSCANNER trademark in its entirety with the addition of the element “pro”, which alludes to the professional nature of the services provided under the disputed domain name and is not sufficient to distinguish it from the SKYSCANNER trademark.
The Complainant maintains that the Respondent has no rights in any trademarks that comprise the disputed domain name, and the term “Skyscanner” is not descriptive and has no generic or dictionary meaning. The Complainant has not given its consent for the Respondent to use the SKYSCANNER trademarks in domain names, and the Respondent is not commonly known under the disputed domain name.
The Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith. The disputed domain name was registered sixteen years after the Complainant first applied to register its SKYSCANNER trademark, so the Respondent registered the disputed domain name in knowledge of the Complainant’s rights and at a time when the Complainant already enjoyed global success. The disputed domain name points to a live website offering a travel aggregator tool and resembles the Complainant’s website, which features a similar tool. According to the Complainant, the Respondent uses the disputed domain name to attract the consumers of the Complainant’s services for commercial gain by the creation of a likelihood of confusion with the Complainant’s SKYSCANNER trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Doing this, the Respondent is intentionally trading on the goodwill of the SKYSCANNER trademark, and its continued ownership of the disputed domain name threatens damage to the reputation of the SKYSCANNER trademark. B. Respondent
The Respondent did not submit a response in this proceeding, but submitted two emails in which he indicated that the disputed domain name was no longer active. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the SKYSCANNER trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “skyscannerpro”. It consists of the elements “sky”, “scanner” and “pro”. The combination of “sky” and “scanner” is identical to the SKYSCANNER trademark, while the “pro” element is commonly regarded as an abbreviation of “professional”. In the Panel’s view, these elements taken together are likely to appear to Internet users as referring to an online location that offers the Complainant’s services to professionals or offers these services at a more advanced level.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the SKYSCANNER trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and has not been authorized by the Complainant to use the SKYSCANNER trademark for domain names and that the Respondent is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name is not legitimate, because the website at the disputed domain name offers the same travel arrangement services that are offered by the Complainant, without disclosing the lack of relationship between the Parties. The Respondent is thus targeting the Complainant’s SKYSCANNER trademark in a manner that may mislead and divert the Complainant’s clients and damage the trademark’s reputation. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. In its message to the Center, it has only stated that the disputed domain name has been deactivated.
The disputed domain name incorporates the SKYSCANNER trademark entirely with the addition of the element “pro”. As discussed above, this makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant offering its services to professionals or at a more advanced level. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that indeed offers travel search services in competition with the Complainant without including a disclaimer of any affiliation to the latter.
On the basis of the above and in the lack of any explanation by the Respondent of its actions, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s SKYSCANNER trademark, is likely to have registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location of the Complainant where its services are offered, without disclosing the lack of any relationship between the Parties. In the Panel’s view, such conduct does not appear to be legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the SKYSCANNER trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name is linked to a website that offers travel search services and does not contain a disclaimer for the lack of affiliation to the Complainant. The services offered at the Respondent’s website compete with the services offered by the Complainant, and in this proceeding the Respondent has not provided any explanation of its actions.
In view of the above, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the SKYSCANNER trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. The website at the disputed domain name may further confuse Internet users due to the fact that it provides the Complainant’s travel search services. Taking this into account, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s SKYSCANNER trademark and the origin of the services offered at its website.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 the Complainant.
Assen Alexiev
Sole Panelist
Date: December 13, 2018
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