The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is G K, United States of America (the “United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2019.
The Center appointed Peter Burgstaller as the sole panelist in this matter on September 9, 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 provides services under its trademark SKYSCANNER especially regarding flight search and price comparison on an online basis. In order to do this, the Complainant operates websites under its trademark SKYSCANNER which actually attract 80 million visits per month and provides smart device apps which has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and seventy currencies worldwide. The acquisition of the Complainant by Ctrip, one of China’s largest on-line travel agency, attracted strong media attention in 2016.
The Complainant has registered several trademarks from 2002 onwards and is now the owner of various trademark registrations in connection with flight search and price comparison services throughout the world, especially the UK wordmark SKYSCANNER Registration No. 2313916 filed on October 23, 2002 and registered on April 30, 2004) which is also the basis mark for the European Union designation of International trademark Registration No. 900393 registered on March 3, 2006. All of these trademarks contain the word SKYSCANNER (Annex 2).
The Respondent has registered the domain name on August 2, 2018 (Annex 1). The disputed domain name resolves to an inactive website.
The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or at least confusingly similar to the Complainant’s registered SKYSCANNER trademarks. The Complainant is the owner of various word and figurative trademark registrations throughout the world which contain the word SKYSCANNER; the trademarks are registered mostly for the service classes 35, 38 and 39 but also for the classes 9, 42 and 43.
The Respondent is not affiliated with Complainant in any way and has not been authorized by the Complainant to use or register its SKYSCANNER trademarks or to seek registration of any domain name incorporating the aforesaid trademarks.
The Respondent has registered the disputed domain name in bad faith since because of the widespread recognition of the Complainant and its rights in the mark SKYSCANNER throughout the world it is highly unlikely that the Respondent was unaware of the Complainant and the Complainant’s rights in the SKYSCANNER marks when registering the disputed domain name. The Respondent also uses the disputed domain name in bad faith – passive holding is within the concept of bad faith usage. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name entirely incorporates and reproduces the Complainant’s wordmark SKYSCANNER. It has long been established under UDRP decisions that suffixes such as “.link” generic Top-Level Domain (“gTLD”) cannot typically negate identity or confusing similarity where it otherwise exists, as it does in the present case. When assessing identity or confusing similarity under the first element of the Policy, the gTLD may be ignored (see Deutsche Telekom AG v. Dexcom Holdings B.V.,WIPO Case No. DTV2006-0001; Société Anonyme des Eaux Minérales d’Evian v. Mr. Omar Haddedou,WIPO Case No. D2005-0432; Uniqa v. Hayderer,WIPO Case No. D2016-0082 under section 1.11 of the WIPO Overview 3.0).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy 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 WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks SKYSCANNER in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) etc. both conditions, registration and used in bad faith, are cumulative; consequently, the Complainant must show that :
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
It is the Panel’s conviction that the reputation of SKYSCANNER trademarks makes it inconceivable that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s trademark rights and further that this leads to the necessary inference of bad faith. Bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which it had no right or legitimate interests. The fact that the Complainant’s trademark rights predate the registration date of the disputed domain name is moreover a strong evidence of bad faith; this is especially true since it is well established by many UDRP decisions that the Complainant’s SKYSCANNER trademarks are well known (see Skyscanner Limited v. Chun Yuan Jiang,WIPO Case No. D2018-1741; Skyscanner Limited v. Domain May Be For Sale,WIPO Case No. D2017-1946; Skyscanner Limited v. Sachin Rawat,WIPO Case No. D2018-0959; Skyscanner Limited v. Mohan Pillai,WIPO Case No. D2019-0690). Another aspect which leads this Panel to the conclusion of bad faith registration is that the disputed domain name entirely reproduces the distinctive SKYSCANNER mark which is highly unlikely without knowledge of the Complainant or its marks.
Although the disputed domain name is currently is not being actively used, previous UDRP Panels have found that bad faith “use” under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent - inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC,WIPO Case No. D2002-0131; Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421; Accor v. WhoisGuard, Inc.,WIPO Case No. D2019-0966).
This Panel also concludes that the present passive holding of the disputed domain name constitutes a bad faith use, putting emphasis on the following:
- Complainant’s trademarks are well known worldwide with strong reputation;
- Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- The disputed domain name entirely incorporates the Complainants trademarks SKYSCANNER, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant’s site).
Hence, no good faith use is possible for the Respondent with regard to the disputed domain name.
On the basis of the evidence put forward by the Complainant, it is the Panel’s conviction that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy 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.
Peter Burgstaller
Sole Panelist
Date: September 17, 2019
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