The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC / Fundacion Comercio Electronico, Carolina Rodrigues, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 October 10, 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 October 15, 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 October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2019. The Center appointed Cherise Valles as the sole panelist in this matter on November 14, 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 an online travel company and owns a number of trademarks in jurisdictions around the world for the term SKYSCANNER, including the following: - International trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006, in classes 35, 38 and 39; - International trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, in classes 35, 39 and 42; - International trademark Registration No. 1133058 for SKYSCANNER and the cloud logo, registered on August 16, 2012, in classes 35, 39 and 42; - Indian trademark Registration No. 1890840 for SKYSCANNER, registered on December 2, 2009, in classes 35, 38 and 39; - United Kingdom trademark Registration No. UK00002313916 for SKYSCANNER, registered on April 30, 2004, in classes 35, 38 and 39; - Canadian trademark Registration No. TMA786689 for SKYSCANNER, registered on January 10, 2011, in classes 35, 38 and 39; and - New Zealand trademark Registration No. 816550 for SKYSCANNER, registered on October 7, 2010, in classes 35, 39 and 42. The Complainant’s website attracts 100 million visits per month and, to date, its app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70currencies. Previous UDRP panels have held that the Complainant has rights in the term SKYSCANNER and that the Complainant’s trademarks are well known worldwide with strong reputation. The disputed domain name was registered on September 23, 2019. It resolves to a parking page containing pay-per-click links advertising travel arrangement services that originate from the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant’s registered trademark, SKYSCANNER, in light of the fact that it wholly incorporates the Complainant’s mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainant has the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Complainant is the sole and exclusive owner of multiple registrations worldwide for SKYSCANNER, as indicated in section 4 above. The disputed domain name is virtually identical to the Complainant’s trademark, as it contains the SKYSCANNER trademark in its entirety, with the disputed domain name adding the letters “e” and “r” to the word “Skyscanner”. Previous UDRP panels have held that the generic Top-Level Domain, in this case,“.com” , is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. See, Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown,WIPO Case No. D2000-0004. There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly-known as “Skyscanner” or “Skyscannerer” (and even if the Respondent does refer to itself as “Skyscanner” or “Skyscannerer”, the Panel concludes that the Respondent’s use of this name constitutes bad faith for the reasons set out in section C below). Given the Complainant’s long-standing worldwide rights in the SKYSCANNER trademarks and the fact that no other individual or business owns trademark rights (whether registered or unregistered) in the SKYSCANNER trademarks, and for the reasons set out in section C regarding the global press surrounding the Complainant in 2016, it is likely that the Respondent was aware of the Complainant’s rights in the SKYSCANNER trademarks prior to registering the disputed domain name. The similarity of the disputed domain name to the Complainant’s SKYSCANNER trademarks makes it likely that Internet users would mistakenly believe there to be association between the disputed domain name and the Complainant. In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (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; (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 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 website or location or of a product or service on its website or location. The Panel concludes that the Respondent registered the disputed domain name as a deliberate misspelling of the Complainant’s trademarks in order to attract Internet users to its website and encourage them to access the pay-per-click links displayed, thereby generating revenue for the Respondent. The disputed domain name is therefore being used to mislead Internet users that there is an affiliation with, or connection to, the Complainant, for commercial gain. Moreover, at the time of registration of the disputed domain name, the Complainant had enjoyed rights in the SKYSCANNER trademarks since 2004. The Complainant’s SKYSCANNER trademarks received a great deal of exposure in the international media in November 2016, after the Complainant was acquired by Ctrip (China’s largest online travel agency) for approximately GBP1.4 billion. It is unlikely to have been a coincidence that the Respondent chose to register a domain name that is highly similar to the Complainant’s SKYSCANNER trademarks after the SKYSCANNER brand was the focus of global public attention. The Panel concludes that the disputed domain name is a deliberate misspelling of the Complainant’s SKYSCANNER trademarks, based on a common typographical error by users of Qwerty keyboards, which was registered by the Respondent in order to attract traffic to its website. Previous UDRP panels have found that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. In addition, previous UDRP panels have found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trademark in a domain name where there is no response and no explanation as to why the use could be good faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. In the absence of a response from the Respondent, it appears that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent is offering the disputed domain name for sale for a minimum offer of USD 899. In the absence of documentation that the Respondent paid USD 899 for the domain name, it appears that the Respondent intends on selling the disputed domain name to the Complainant or its competitors for an amount that exceeds its documented out-of-pocket registration costs. If the disputed domain name were to resolve to an active website in the future (rather than the parking page the disputed domain name currently resolves to), it is likely that such use would be designed to take unfair advantage of the Complainant’s reputation in the SKYSCANNER trademarks. Such use would likely divert custom from the Complainant and damage the reputation that the Complainant enjoys in its SKYSCANNER trademarks. Finally, the Respondent’s use of proxy registration services is evidence of bad faith registration. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 Cherise Valles
Sole Panelist
Date: November 25, 2019
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