The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC and DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Whois Foundation, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 21, 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 August 23, 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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 24, 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 states that it is the owner of the SKYSCANNER Trademark (defined below); that its rights in this trademark “date back to 2002”; that the Disputed Domain Name was created on July 2, 2006, and acquired by Respondent between September 26, 2014, and December 8, 2014; that the Disputed Domain “points to a generic parking page”; and that Respondent has offered the Disputed Domain Name for sale for USD 3,527.
The Complainant states, and provides evidence to support, that it owns 91 trademark registrations for marks that contain the term SKYSCANNER (the “SKYSCANNER Trademark”), including European Union Trademark Registration No. 0900,393 for SKYSCANNER (registered March 3, 2006) and International Trademark Registration No. 1,030,086 for SKYSCANNER (registered December 1, 2009). 5. Parties’ Contentions A. Complainant
The Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SKYSCANNER Trademark because, inter alia, the Disputed Domain Name “omits one letter ‘n’ and includes the letter ‘s’ at the end of the [Disputed] Domain Name”, which “remains aurally and visually similar to a high degree with the Complainant’s [r]ights”.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[s]o far as the Complainant is aware, the Respondent does not own any registered rights in any trade marks which comprise part or all of the disputed domain names”; “[t]he Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration”; “[t]o the best of the Complainant’s knowledge the Respondent is not commonly-known as ‘Skyscanner’ or ‘Skyscaners’”; “[t]here is no evidence of that the Respondent has made demonstrable preparations to use the [Disputed] Domain Name, nor is there any evidence that the Respondent is using the domain name in connection with a bona fide offering of goods and services”; and “[g]iven the famous nature of the Complainant’s mark and the fact that no other individual or business owns trade mark rights (whether registered or unregistered) in the Skyscanner trade mark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to registering the [Disputed] Domain Name but it is inevitable that visitors to the Domain Name (once it resolves to an active website) would mistakenly believe there to be association with the Complainant”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he domain history report…indicates that the Respondent acquired the [Disputed] Domain Name between 26 September 2014 and 8th December 2014”; “[g]iven that the Complainant’s registered rights date back to 2002, the Complainant submits that at the very least, the Respondent should have been aware of the reputation of the Complainant’s business under its SKYSCANNER trade mark at the time the Respondent registered the disputed Domain Name, at which stage the Complainant already enjoyed international success”; “it can be no coincidence that the Respondent chose to register a Domain Name that is identical to the Complainant’s Rights, not only because of the highly similar nature of the domain name but because the Respondent chose to register a Domain Name that incorporates a service that the Complainant provides (namely, car hire and vehicle rental services)”; “there is a realistic and serious threat posed by the Respondent’s continued ownership of the [Disputed] Domain Name, not least the threat of a diversion of custom and the inevitable damage to the reputation that the Complainant enjoys in its Skyscanner trade mark”; and Respondent’s attempts to sell the Disputed Domain Name for sale for USD 3,527 are “for valuable consideration in excess of its documented out-of- pocket costs directly related to the domain name” because “Respondent’s out-of-pocket costs related to the acquisition and maintenance of the [Disputed] Domain Name would not exceed USD 300 – USD 500, assuming that it acquired the [Disputed] Domain Name through a domain auction website”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the SKYSCANNER Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SKYSCANNER Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “skyscaners”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the Disputed Domain Name contains the SKYSCANNER Trademark in its entirety, with only two small differences: the Disputed Domain Name deletes one letter “n” and adds the letter “s”. As set forth in section 1.9 of WIPO Overview 3.0:
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.
The Panel finds that the Disputed Domain Name contains an intentional misspelling of the SKYSCANNER Trademark and, therefore, the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[s]o far as the Complainant is aware, the Respondent does not own any registered rights in any trade marks which comprise part or all of the disputed domain names”; “Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration”; “[t]o the best of the Complainant’s knowledge the Respondent is not commonly-known as ‘Skyscanner’ or ‘Skyscaners’”; “[t]here is no evidence of that the Respondent has made demonstrable preparations to use the [Disputed] Domain Name, nor is there any evidence that the Respondent is using the domain name in connection with a bona fide offering of goods and services”; and “[g]iven the famous nature of the Complainant’s mark and the fact that no other individual or business owns trade mark rights (whether registered or unregistered) in the Skyscanner trade mark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to registering the [Disputed] Domain Name but it is inevitable that visitors to the Domain Name (once it resolves to an active website) would mistakenly believe there to be association with the Complainant”.
WIPO Overview 3.0, section 2.1, states: “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.”
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with a monetized parking page that contains links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Here, the Panel notes that the website associated with the Disputed Domain Name contains, links labeled, in part, “Online Ticket Purchasing System” and “Search Ticket Inventory System” – links that are related to the goods and services for the SKYSCANNER Trademark. Accordingly, the Panel finds that the Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: October 1, 2019
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