The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Mohammed Hasan Sheikh, Kuwait, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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 June 11, 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 June 12, 2019.
In its communication of June 12, 2019, the Complainant requested the suspension of the administrative proceeding for the purposes of settlement discussions with the Respondent concerning the transfer of the disputed domain name. The Center suspended the proceeding until July 13, 2019. On June 25, 2019, the Complainant informed that the parties had failed to reach settlement and requested the reinstitution of this proceeding, which the Center confirmed on June 25, 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 June 26, 2019. In accordance with the Rules, Paragraph 5, the due date for filing a Response was July 16, 2019. The Respondent sent an email communication on June 26, 2019. The Respondent did not submit a formal Response. Accordingly, on July 18, 2019 the Center notified the parties that it would proceed to panel appointment.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 2, 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 Skyscanner Limited, a Scotland-based company, incorporated in 2003, that offers a travel search site and mobile application with flight, hotel and car reservation options, available in 30 languages and 70 currencies. The Complainant provides services to approximately 80 million people monthly.
The Complainant owns, among others, the following trademark registrations (and pending application):
Trademark
Registration
Number
Registration Date
Classes
Jurisdiction
SKYSCANNER
3252752
May 15, 2007
35, 38, 39
United States of America
SKYSCANNER
4420284
October 22, 2013
35, 39, 42
United States of America
SKYSCANNER
TMA786689
January 10, 2011
35, 38, 39
Canada
SKYSCANNER
1030086
December 1, 2009
35, 39, 42
Armenia, Australia, Azerbaijan, Bahrain, Belarus, Bosnia and Herzegovina, China, Colombia, Croatia, Cuba, Democratic People’s Republic of Korea, Egypt, European Union, Georgia, Islamic Republic of Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Liechtenstein, Morocco, Monaco, Montenegro, Mexico, North Macedonia, Norway, Oman, Republic of Moldova, Russian Federation, Serbia, Singapore, Switzerland, Syrian Arab Republic, Turkey, Ukraine, Viet Nam
SKYSCANNER
UK00002313916
April 30, 2004
35, 38, 39
United Kingdom
SKYSCANNER
816550
October 7, 2010
35, 39, 42
New Zealand
SKYSCANNER
1890840
No information
35, 38, 39
India
SKYSCANNER
(and design)
App. No.: 2287020
Pending
35, 39, 42
India
The disputed domain name was registered on May 24, 2019. The web site to which the disputed domain name resolves comprises links that redirect Internet users to web sites that display the text “This site is temporarily unavailable”.
The Respondent also owns the domain name , which was registered on the same date as that of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant argued the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant owns 91 registrations for the trademark SKYSCANNER in various countries and classes, including international registrations.
That three previous panels appointed under the Policy have held that the Complainant is the owner of the trademark rights related to SKYSCANNER.
That the Complainant’s web site attracts 80 million visits per month and that the Complainant’s mobile application has been downloaded over 70 million times.
That the Complainant’s services are available in over 30 languages and in 70 currencies which amounts to the global reputation of the Complainant’s trademark SKYSCANNER.
That the addition of the generic Top-Level Domain (“gTLD”) “.space” to the disputed domain name is irrelevant for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
That the disputed domain name is identical to the Complainant’s SKYSCANNER trademark.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name.
That the Respondent does not own any registered rights to any trademark comprised of the disputed domain name, or any portion thereof.
That the trademark SKYSCANNER is highly distinctive in the context of the services that the Complainant offers under such trademark.
That there is no reason for any party, other than the Complainant, to use the term SKYSCANNER as a trademark.
That the Complainant has not given its consent for the Respondent to use the trademark SKYSCANNER in a disputed domain name or in any other manner.
That the Respondent is not commonly known as “Skyscanner”, and that even if the Respondent did refer to itself as “Skyscanner”, the Respondent’s use of this term constitutes bad faith, as the Respondent’s interest cannot be legitimate or associated with a bona fide use of the disputed domain name.
That the disputed domain name does not resolve to an active web site and that there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and/or services.
That, given the famous nature of the Complainant’s SKYSCANNER mark and the fact that no other individual or business owns rights to this trademark, the Respondent was aware of the Complainant’s rights prior to acquiring the disputed domain name.
That it is inevitable that Internet users will think that the disputed domain name is associated with the Complainant.
That the Complainant has made a prima facie case and that the burden of proof to rebut the Complainant's allegations now falls on the Respondent.
(iii) Registration and use in bad faith.
That the Respondent registered and uses the disputed domain name in bad faith.
That the Respondent registered the disputed domain name knowing about the Complainant’s trademark rights, because at the time when the disputed domain name was registered, the trademark SKYSCANNER enjoyed a global reputation, as a consequence of 17 years of aggressive international growth.
That the Complainant’s trademark SKYSCANNER has had media exposure internationally, for example in November 2016, after the Complainant was acquired by Ctrip, China’s largest online travel agency, in a deal worth approximately GBP 1.4 billion.
That it cannot be a coincidence that the Respondent registered a disputed domain name that exactly replicates the Complainant’s trademark.
That a passive holding of the disputed domain name, which cannot be used legitimately by anyone other than the trademark holder, constitutes registration and use in bad faith, as the disputed domain name is being used as a blocking registration, preventing the Complainant from using it for legitimate commercial purposes.
That the Complainant has a reason to use the disputed domain name for legitimate commercial purposes since the disputed domain name replicates its trademark.
That, if the Respondent does point the disputed domain name to an active web site in the future, such use can only be deemed to take place as an attempt to extract an unfair advantage from the reputation of the Complainant’s rights.
That the Respondent’s continued ownership of the disputed domain name constitutes a threat of a diversion of customers and, consequently, inevitable damage to the reputation that the Complainant and its trademark SKYSCANNER enjoy.
That it is implausible to presume that the Respondent chose to adopt a domain name comprising the Complainant’s trademark SKYSCANNER for any other reason than to deliberately create a false impression of an association with the Complainant, and to target its business.
That previous panels appointed under the Policy have concluded that there can be a finding of registration and use of a domain name in bad faith where there is a passive use of a widely known trademark in a domain name, where there is explanation as to why said registration and use could actually constitute good faith. B. Respondent
The Respondent did not submit a formal Response to the Complainant’s contentions. Instead, the Respondent sent several informal emails exchanged with the Complainant and the Center between June 11 and 26, 2019.
Although a respondent’s response should meet the standards specified by the Rules and Supplemental Rules, the Panel agrees to consider the assertions made by the Respondent in his emails, to ensure that each Party is given a fair opportunity to present their case, as set forth in paragraph 10 of the Rules.
In his emails addressed to the Complainant between June 11 and June 18, 2019, the Respondent alleged that he is not the owner of the disputed domain name and that someone used his personal data to register it.
The Respondent repeatedly argued that, as he does not own the disputed domain name, he cannot transfer it to the Complainant.
In his communication dated June 26, 2019, the Respondent said that he has cooperated with the Complainant from the beginning of this dispute and that he has “nothing to do with the said domain name”. The Respondent also stated that he does not have any intent to infringe anyone's copyright or trademark rights. The Respondent claimed that he contacted the Registrar, who had agreed to cancel the disputed domain name, and to “clear his name”. Furthermore, the Respondent stated that he had informed the Complainant about those developments, and that he was “positive to settle”, but that he could not transfer the disputed domain name, as he does not own it. The Respondent advised the Complainant to contact the Registrar in order to resolve this situation. 6. Preliminary Discussion – Respondent’s allegations
The Respondent alleges that he does not own the disputed domain name and that someone used his personal data in order to register it. However, after analyzing the evidence produced in this case, the Panel considers that there are various inconsistencies in the Respondent’s statements, which are discussed below.
All of the communications sent by the Respondent to the Complainant and the Center were conducted through an email address which corresponds to that of the registrant’s, technical, administrative, and billing contacts , in accordance with the information shared by the Registrar.
In order to register a domain name through the Registrar’s web site, a registrant must pass both the “ICANN Verification” and “WHoIs Verification” processes that require the following:
ICANN Verification: “Upon these events (a new domain name is registered with us), we'll send an email to the domain's registrant (owner) asking them to verify the contact information is valid by clicking a link. If this isn't done within 14 days, the domain will be suspended pending verification.”
WHoIs Verification: “When you purchase a new domain or transfer one to us, we'll send an email to the registrant asking them to verify their contact information is valid by clicking a link. If it isn't done within 14 days, the domain will be suspended pending verification, and it can take 24-48 hours for your web sites to be reactivated once you do verify.”
Therefore, in order to successfully register a domain name, it is necessary for a registrant to have access to the email account that he/she provided to the Registrar at the time of registration of a domain name.
In response to the Center’s registrar verification request, the Registrar has identified the Respondent as the registrant of the disputed domain name.
The respondent claims that he contacted the Registrar in order to cancel the disputed domain name, which, according to the Respondent, the Registrar did (“D took possession of it”). Nevertheless, he has not submitted any evidence of this communication, or any proof of the alleged cancellation of the disputed domain name.
The fact is that the Respondent is named as the registrant of the disputed domain name in the WhoIs database, and that he is using the email that was designated as the point of contact between the Registrar and the registrant.
In accordance with the Policy, the applicable standard of proof is the “balance of probabilities” or “preponderance of the evidence” (see section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Therefore, and taking into account that the Respondent did not provide any relevant evidence to support his claim that he is not the registrant of the disputed domain name, this Panel shall continue to consider him the Respondent in the current proceeding. 7. Discussion and Findings
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence showing that it owns trademark registrations for SKYSCANNER in various jurisdictions and classes.
The Panel considers that the disputed domain name is identical to the Complainant’s trademark SKYSCANNER.
The addition of the gTLD “.space” to the disputed domain name is without legal significance for the purpose of assessing confusing similarity (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919; Compagnie Générale des Etablissements Michelin v. Gui He Xing,WIPO Case No. D2018-1446).
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 mark at issue.
The Complainant has submitted evidence showing that it holds rights to the trademark SKYSCANNER in numerous Jurisdictions including the United States of America, European Union, Canada, United Kingdom, and India. At the same time, there is no evidence proving that the Respondent has been commonly known by the disputed domain name, or that he is anyhow associated with the term “Skyscanner” (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
Furthermore, there is no evidence of the Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the web site to which the disputed domain name resolves, currently displays links and the text “This site is temporarily unavailable” (see section 2.2 of the WIPO Overview 3.0).
The Complainant’s trademark SKYSCANNER has been considered well-known and famous by previously appointed UDRP panels (see Skyscanner Limited v. Egor Kargapolov,WIPO Case No. D2018-0692; Skyscanner Limited v. Milen Radumilo,WIPO Case No. D2019-0787). This Panel agrees.
The Panel concludes that the Respondent’s selection of the disputed domain name cannot be assumed coincidental as the disputed domain name is identical to the Complainant’s famous trademark and carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). Therefore, the Respondent’s conduct clearly targets the Complainant and its business and constitutes an intentional act aiming to mislead Internet users; therefore, it cannot constitute a bona fide offering of goods or services.
Consequently, the second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online 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 its web site or location.
Due to the worldwide recognition of the Complainant’s trademark SKYSCANNER and the fact that the disputed domain name is identical to such trademark, it is reasonable to conclude that the Respondent knew about the Complainant and its trademark SKYSCANNER at the time of registration of the disputed domain name (see Revlon Consumer Products Corporation v. Terry Baumer,WIPO Case No. D2011-1051; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763; Nutricia International BV v. Eric Starling,WIPO Case No. D2015-0773).
The Panel notes that the Respondent is a party to another UDRP proceeding, in relation to a domain name that is very similar to the one at hand, i.e., (Skyscanner Limited v. Mohammed Hasan Sheik,WIPO Case No. D2019-1313).
If the web site to which the disputed domain name resolves is considered as inactive, the consensus view amongst panels appointed under the Policy is that the lack of active use of a domain name, even without it being offered for sale, does not prevent a finding of bad faith. Under such circumstances, each case must be examined individually (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246; see also section 3.3 of the WIPO Overview 3.0).
However, the Panel notes that the Web site, to which the disputed domain name resolves, also displays various links. Such links may be generating click-through revenue for the Respondent or third parties and is a further evidence of bad faith.
In the present case, the following circumstances clearly suggest bad faith, considering that the Respondent has knowingly targeted the Complainant:
- The Complainant’s trademark SKYSCANNER is famous.
- The disputed domain name is identical to the Complainant’s trademark SKYSCANNER.
- The Respondent clearly does not have any rights to, or legitimate interests in the disputed domain name; he has produced no credible explanation for his choice of registering the disputed domain name.
- The Respondent has tried to conceal his identity and has claimed not to be the owner of the disputed domain name, when the evidence comprised in this case file proves that he is indeed the registrant of said disputed domain name.
The foregoing conducts amount to passive holding under the Policy (see section 3.3 of the WIPO Overview 3.0; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and “Dr. Martens” International Trading GmbH, supra).
The third element of the Policy has been met. 8. 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.
Kiyoshi Tsuru
Sole Panelist
Date: August 19, 2019
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