The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Domains By Proxy, LLC, United States of America (the “United States”) / Harit Ralli, United States. 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 April 30, 2019. On April 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2019, 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 May 1, 2019 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 May 3, 2019.
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 May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 6, 2019. 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 was founded in 2003 and it has offices in Barcelona, Beijing, Budapest, Edinburgh, Glasgow, London, Miami, Shenzhen, Singapore and Sofia. The Complainant offers a travel search site and provides its services through the website associated to the domain name .
The Complainant is the owner of inter alia, the following trademark registrations for the term SKYSCANNER:
- European Union designation of International Trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006;
- European Union designation of International Trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009; and,
- United States designation of International Trademark Registration No. 1133058 for SKYSCANNER & Cloud device, registered on August 16, 2012.
The Disputed Domain Name was registered on April 13, 2019.
The Disputed Domain Name redirects Internet users to a generic parking page. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Name is highly similar to the Complainant´s trademark.
Furthermore, the Disputed Domain Name reproduces the Complainant´s trademark in its entirety. The additional term “rentals” is a sub-set of the “travel arrangements services” protected by the Complainant´s rights.
Rights or legitimate interests
The Complainant submits that the Respondent does not own any registered rights in any trademarks which comprise part or all of the Disputed Domain Name.
In addition, the term “Skyscanner” is not a descriptive word and does not have a dictionary meaning. Moreover, the Complainant has not given its consent to use the SKYSCANNER trademark in a domain name registration.
The Complainant further alleges that the Respondent is not commonly known as “Skyscanner” or “Skyscanner Rentals”.
The Complainant states that the Respondent has not made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services.
Finally, the Complainant submits that the Respondent was aware of the Complainant´s rights prior to the registration of the Disputed Domain Name. Consequently, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that at the time of the registration of the Disputed Domain Name, the Complainant already enjoyed international success. In this sense, by April 13, 2019 the Complainant enjoyed a global reputation in its SKYSCANNER trademark.
Moreover, the Complainant states that it can be no coincidence that the Respondent chose to register a domain name that is identical to the Complainant´s trademark. Furthermore, the Respondent chose to register a domain name that incorporates a service that the Complainant provides.
Finally, the passive holding of the Disputed Domain Name evidence the registration and use in bad faith, as the Disputed Domain Name is being used as a blocking registration, preventing the Complainant from using the domain name for a legitimate commercial purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant is the owner of several trademark registrations for the term SKYSCANNER.
The Disputed Domain Name is confusingly similar to the Complaint’s trademarks SKYSCANNER. The addition of the generic term “rentals” does not provide sufficient distinction from the Complainant’s trademarks.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks in the Disputed Domain Name. The Complainant has prior rights in the trademarks, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) 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 Name in bad faith.
The Disputed Domain Name was registered on April 13, 2019, while the Complainant SKYSCANNER Trademark Registration No. 900393 was registered on March 3, 2006.
The Panel is of the view that the Respondent registered the Disputed Domain Name in knowledge of the Complainant´s SKYSCANNER trademark since at the time of the registration the Complainant had already a global reputation. Moreover, the addition to the Disputed Domain Name of the term “rental” to the Complainant´s trademark is further evidence of bad faith since the term is related to the Complainant’s business.
Furthermore, the Respondent’s website associated with the Disputed Domain Name resolves to a parking page containing pay-per-click links which are related to the Complainants businesses. As such, the Panel finds that the 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 trademark as to the source, sponsorship, and affiliation of the Disputed Domain Name (Paragraph 4(b) (iv) of the Policy).
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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.
Pablo A. Palazzi
Sole Panelist
Date: June 10, 2019
Full & Egal Universal Law Academy