The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Deepak Sharma, Cheap Tolls, India. 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 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 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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019. However, the Respondent sent an email on September 8, 2019.
The Center appointed Peter Burgstaller as the sole panelist in this matter on September 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. 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 have been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and 70 currencies worldwide. Moreover, the acquisition of the Complainant by Ctrip, one of China’s largest online 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 United Kingdom wordmark SKYSCANNER registration No. UK00002313916 (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 to the Complaint).
The Respondent has registered the disputed domain name on July 10, 2018 (Annex 1 to the Complaint). 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 highly 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 classes 35, 38 and 39 but also for the classes 9, 42 and 43.
The Respondent is not affiliated with the 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the time limit (September 4, 2019).
However, on September 8, 2019 the Respondent sent an email to the Center with the following content:
“Hi team, As you guys can see that go daddy have sold this domain. I have only purchased I have not used it. Since so long. So there nothing my fault. It was available in go daddy so i bought. You guys could have suspended the domain. So there is no my fault please contact go daddy they were selling. And I need my compensation from go daddy why they are selling those domain which is already registered on someone else name. Thanks and regards Deepak”.
The Respondent did not submit further evidence to that email and in particular failed to specifically address the case merits. 6. Discussion and Findings
Before discussing the merits of the case this Panel finds that the Respondent’s email to the Center dated September 8, 2019 neither met the formal requirements (no Response within the deadline) nor the substantive requirements of a Response under the UDRP; because failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” or “its not my fault” amounts in the Panel’s view in itself to a Respondent default.
This Panel therefore will not consider the Respondent’s email dated September 8, 2019 as a Response. The Panel notes that the Respondent’s submissions would not have altered the outcome of this decision.
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 almost entirely incorporates and reproduces the Complainant’s wordmark SKYSCANNER; the disputed domain name only differs from the Complainant’s distinctive trade mark inasmuch as it contains an additional “s” which in itself does not eliminate confusing similarity where it otherwise exists, as it does in the present case. The same is true regarding suffixes such as the generic Top-Level Domain (“gTLD”) “info”: It has long been established under UDRP decisions that this alone cannot typically negate identity or confusing similarity (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 Insurance Group AG v. Heinz Hayderer,WIPO Case No. D2016-0082 under section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “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, previous 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 formal Response. Considering 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), 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. G K, WIPO Case No. D2019-1947; Skyscanner Limited v. Chun Yuan Jiang,WIPO Case No. D2018-1741; Skyscanner Limited v. Domain May Be For Sale, Check Domain Admin / Hulmiho Ukolen,WIPO Case No. D2017-1946; Skyscanner Limited v. Sachin Rawat, Farebulk,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 almost 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 Corporation 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. / Andrii Shuiskyi,WIPO Case No. D2019-0966).
This Panel also concludes that the present passive holding of the disputed domain name constitutes bad faith use, putting emphasis on the following:
- the Complainant’s trademarks are well known worldwide with strong reputation;
- the 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 Complainant’s trademarks SKYSCANNER, and thus likely diverts or misleads 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 21, 2019
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