The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 9, 2019, 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 May 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2019.
The Center appointed Edoardo Fano as the sole panelist in this matter on June 11, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is Skyscanner Limited, a UK company operating worldwide as an Internet search engine in the field of travels and owning several trademark registrations for SKYSCANNER, among which the following ones:
- International Trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006;
- International Trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009.
On April 25, 2019, the same day on which the Respondent registered the disputed domain names, the Complainant filed the following trademark applications:
- UK Trademark Application No. UK00003394812 for SKYSCANNER GO;
- UK Trademark Application No. UK00003394814 for SKYSCANNER UP;
- European Union Trademark Application No. 018055770 for SKYSCANNER GO;
- European Union Trademark Application No. 018055771 for SKYSCANNER UP.
The Complainant provided evidence in support of the above.
The disputed domain names and were registered on April 25, 2019, according to the WhoIs records, and when the Complaint was filed they pointed to websites offering the disputed domain names for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain names and are confusingly similar to its trademark SKYSCANNER, since they fully incorporate the Complainant’s trademark, and are identical to its trademarks SKYSCANNER GO and SKYSCANNER UP.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, nor is the Respondent commonly known by the disputed domain names. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark SKYSCANNER is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the use in bad faith has to be found in the passive holding of the disputed domain names and in the offer to sell them for an amount that far exceeds the out-of-pocket costs for their registration. B. Respondent
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark SKYSCANNER both by registration and acquired reputation and that the disputed domain names and are confusingly similar to the trademark SKYSCANNER.
Regarding the addition of the terms “go” and “up”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the terms “go” and “up” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.
Moreover, on the same day on which the Respondent registered the disputed domain names the Complainant filed four applications for trademark registration for SKYSCANNER GO and SKYSCANNER UP, two in the UK and two in the European Union.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following 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:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark SKYSCANNER as an Internet search engine in the field of travels is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names because they are confusingly similar to the Complainant’s trademark.
Regarding the use in bad faith of the disputed domain names, pointing to websites where there is only the offer for sale of the disputed domain names (for USD 990 or EUR 877), the Panel considers that in the circumstances of this case, and in the absence of any Response to the Complaint, such use amounts to bad faith.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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, , be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: June 22, 2019
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