The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1244355693, Canada / Mrs. K. Ananthan, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Google 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 May 1, 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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.
The Center appointed Jane Lambert as the sole panelist in this matter on June 5, 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 is a travel fare aggregator website and travel metasearch engine. It is used by over 80 million people every month in 30 languages. It also offers a mobile app which has been downloaded over 70 million times. It employs over 1,000 staff at its offices in Barcelona, Beijing, Budapest, Edinburgh, Glasgow, London, Miami, Palo Alto, Shenzhen, Singapore, and Sofia.
The Complainant has registered the words “SkyScanner” and “SKYSCANNER” as international trade marks designating the EU for advertising and other services under international registration numbers 900393 and 1030086.
In 2016 the Complainant was acquired by the Chinese company Ctrip for GBP 1.4 billion which attracted considerable press attention.
The First Respondent offers a privacy service.
The Second Respondent appears to be an individual living in the United Kingdom. The address for the Second Respondent on the Complaint appears to be wrong. The said town is located in Scotland, however, the postcode is for a district of Coventry, in the West Midlands. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name on the grounds that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered is being used in bad faith.
As to the first ground, the Complainant points to its above-mentioned international trade mark registrations. Those marks differ from the disputed domain name only in the addition of the abbreviation “ltd” and the “.com” suffix on the disputed domain name. The Complainant submits that the abbreviation indicates that a company is incorporated with limited liability and that the suffix can be disregarded for the purposes of considering whether a domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Regarding the second ground, the Complainant is not aware of any trade mark or other registrations by the Respondent that comprise all or part of the disputed domain name. The word SKYSCANNER is neither descriptive nor generic and the Complainant has never licensed the use of its marks by either Respondent. To the best of the Complainant’s belief, neither Respondent is commonly known as “Skyscanner” or “Skyscanner Ltd.” Any use of either of those names by either Respondent would amount to bad faith for the purpose of the Policy. According to the Complaint, the disputed domain name resolved to a parking page. The Panel entered the domain name into her browser on June 18, 2019 but was unable to find even a parking page. Nobody has found any signs of use or intended use in connection with a bona fide offering of goods or services. The Second Respondent is likely to have registered the disputed domain name in the hope of attracting some of the Complainant’s traffic to a site she intends, or had intended to, create in the future.
In respect of the third ground, the Complainant says that the Respondents must have been aware of its existence by reason of the volume of business that it transacts and the press attention it received when it was acquired by Ctrip. It submits that the disputed domain name is likely to be used for a website that will misrepresent a connection with the Complainant’s business. That would be use in bad faith and any registration of a domain name with that intention would amount to registration in bad faith. The Complainant referred to the Panelist’s analysis in Telstra Corporation Limited v. Nuclear MarshmallowsWIPO Case No. D2000-0003. There it was held that “the passive use of a widely known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith” can amount to registration and use in bad faith. It is submitted that the facts of this case are similar and should lead to a similar outcome. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4 (a) of the Policy requires respondents to submit to mandatory administrative proceedings in the event that a third party (a “complainant”) asserts in compliance with the Rules of Procedure, that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have 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.
In the administrative proceeding, the Complainant must prove that each of these three elements is present. A. Identical or Confusingly Similar
The first requirement has been met.
The Complainant has registered the word SKYSCANNER as a trade mark for a range of services in many countries. The disputed domain name differs from mark that has been registered in those countries only by the addition of the abbreviation “ltd” and the “.com” suffix. As the Complainant’s corporate name is SkyScanner Limited, the disputed domain name is obviously confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The second requirement has been met.
Paragraph 4 (c) of the Policy lists a number of circumstances in which a respondent could demonstrate that it has rights or legitimate interests to a disputed domain name for the purposes of paragraph 4(a) (ii). The Complainant has considered all of those circumstances and found no evidence that any of them applies. The Complainant has also confirmed that it has never allowed the Respondents to make any use of its trade marks. In the absence of any evidence to the contrary it must be inferred that the Respondents had no rights or legitimate interest in the disputed domain name. The Respondents have been given an opportunity to adduce evidence that they have rights or legitimate interests in the disputed domain name but have failed to do so. C. Registered and Used in Bad Faith
The third requirement has been met.
Paragraph 4 (b) of the Policy lists a number of circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The words “without limitation” indicate that they are not the only circumstances in which evidence of registration and use of a domain name may be found. In Telstra v. Nuclear Marshmallows the Panel reached its conclusion after an analysis of the facts of this case.
The Panel considers the following circumstances to be relevant:
(1) The Complainant has registered its SkyScanner and SKYSCANNER marks in many countries around the world.
(2) It transacts an enormous volume of business by reference to those marks.
(3) It has received considerable publicity by reference to its corporate name over the years.
(4) The disputed domain name is confusingly similar to the Complainant’s marks.
(5) Any use of that name anywhere in the world is likely to be actionable.
(6) The Second Respondent has taken some steps to conceal her identity by using the First Respondent’s privacy service.
(7) The Respondents have been shown the Complainant’s case and allowed an opportunity to answer it but have failed to do so.
The overwhelming likelihood is that the Second Respondent registered the disputed domain name to make money from it. The actual way in which she would have done so is not clear. She may have intended to sell the disputed domain name to the Complainant, a competitor or a critic. Alternatively, she may have intended to set up her own flight fare aggregator. None of that matters. The fact is that she registered and retained a domain name that she could not use lawfully. That of itself amounts to registration and use in bad faith. That is what the Panelist in the Telstra case appears to have meant by “passive holding”. It is also consistent with the decision of the Court of Appeal of England and Wales in British Telecommunications Plc and Others v. One In A Million Ltd & and others [1998] ITCLR 146, [1997-98] Info TLR 423, [2001] EBLR 2, [1998] EWCA Civ 1272, [1998] Masons CLR 165, [1999] ETMR 61, [1999] 1 WLR 903, [1999] FSR 1, [1999] WLR 903, [1999] 1 ETMR 61, [1998] 4 All ER 476; upholding the decision of Mr. Jonathan Sumption QC (as he then was) at first instance (see Marks & Spencer Plc and others v One in a Million Ltd. and others [1998] FSR 265). In that case, Mr Sumption said at page 272: “Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.” If there was any justification for the registration of the disputed domain name in this case, the Respondents had an ample opportunity to say what it was but failed to do so. The facts of this case are ejusdem generis those set out in paragraph 4 (b). 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.
Jane Lambert
Sole Panelist
Date: June 18, 2019
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