Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, 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 November 20, 2019. On November 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020. The Center appointed Phillip V. Marano as the sole panelist in this matter on January 24, 2020. 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 Complainant is an online travel company in London, United Kingdom that provides a search engine and price comparison website at Respondent registered the disputed domain name on November 8, 2017. At the time of filing this Complaint, the disputed domain name resolved to a pay-per-click parking page advertising “related links” to “Skyscanner Cheap Flights” and “Skyscanner Flights” and third-party travel arrangement services. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the SKYSCANNER trademark and has adduced as evidence of numerous trademark registrations in countries and regions around the world, including the European Union, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Canada, China, India, Japan, Norway, Russian Federation, Singapore, Switzerland, Turkey, Ukraine and the United States of America. Complainant asserts that the Skyscanner websites attract more than 100 million visits per month and, its smart device app has been downloaded over 70 million times. The disputed domain name is virtually identical to Complainant’s SKYSCANNER trademark, according to Complainant, because it merely includes the additional elements “gb” and “nl”, which are alphanumeric country codes for the United Kingdom and the Netherlands respectively. These additional elements are merely target markets for Respondent, according to Complainant, and they are also countries in which Complainant operates. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: Respondent’s lack of any registered trademark rights in the term Skyscanner; the lack of any generic meaning for the term Skyscanner; Respondent’s pointing the disputed domain name to a pay‑per-click-parking page with hyperlinks to online travel services in competition with Complainant; the famous nature of Complainant’s SKYSCANNER trademark; and the lack of any evidence that Respondent is known by the name Skyscanner. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the global reputation of Complainant’s SKYSCANNER trademark when Respondent registered the disputed domain name plus the absence of any plausible legitimate uses of the disputed domain name; Respondent’s use of the disputed domain name to resolve to a pay-per-click-parking page with hyperlinks to online travel services in competition with Complainant; Respondent’s attempts to sell the disputed domain name for USD1,999 on the Sedo.com online domain name marketplace; Respondent’s passive holding of the disputed domain name since it was registered; Respondent’s use of a WhoIs privacy service to shield Respondent from identification in enforcement actions; and a pattern of bad faith conduct established by seven prior UDRP panel determinations against Respondent all resulting in domain name transfer. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: ( i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ( ii) 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. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), section 4.3 (2017) (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the SKYSCANNER trademark has been registered internationally with earliest priority dating back to March 3, 2006 in the European Union, over 11 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the SKYSCANNER trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s SKYSCANNER trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s SKYSCANNER trademark because, disregarding the .com Top-Level Domain (TLD), that trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). TLDs, such as “.com” in the disputed domain name, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11. Furthermore, confusing similarity is not dispelled by combination with the geographic terms “GB” or “NL”. WIPO Overview 3.0, Section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110 (“The addition of the generic name ‘condoms’ does not avoid confusion. In fact, since the term describes Complainant's products, the addition of "condoms" is more likely to increase confusion.”); AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”). In this Complaint, the Panel agrees with Complainant that the additional geographic terms “gb” and “nl” are presumptively references to the United Kingdom and the Netherlands, two countries in which Complainant holds trademark rights and offers its services. In view of Complainant’s widespread registration for the SKYSCANNER trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. Based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. This is especially the case where a disputed domain name is so obviously connected with a complainant and its services, that the very use, let alone attempts to monetize or sell, by a registrant with no connection to the complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had Complainant’s SKYSCANNER trademarks in mind when registering the disputed domain name, and that Respondent most likely registered the disputed domain names in order to exploit and profit from Complainant’s trademark rights. To that end, service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant’s SKYSCANNER trademark and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name. WIPO Overview 3.0 , section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain name, “PPC links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users”). In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, plus Respondent’s attempts to sell and monetize the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Registration of the disputed domain name with intent to profit by exploiting Complainant’s trademark and selling that domain name constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where Respondent clearly has knowledge of Complainant’s trademarks, the website content associated with the disputed domain name targets the Complainant or its competitors, and Respondent offers to sell the disputed domain name to the highest bidder or otherwise to the general public. WIPO Overview 3.0 , section 3.1.1 . Specifically, Respondent placed the disputed domain name on Sedo.com, a popular online marketplace for domain name sales, an open offer to the public to sell the disputed domain name for USD1,999.00. This is far in excess of any conceivable or apparent registration costs and it falls well within paragraph 4(b)(i) of the Policy. Respondent’s offer at this price is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain name, which is identical or confusingly similar to Complainant’s SKYSCANNER trademark. Moreover, third-party generated material, such as parking websites with pay-per-click links, cannot be disclaimed by Respondent to prevent a finding of bad faith. WIPO Overview 3.0, section 3.5 (“a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497 (“It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith … Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site”) (internal citations omitted). It is evident from the record in this Complaint that Respondent registered the disputed domain name with bad faith intent to profit from a likelihood of confusion with Complainant’s SKYSCANNER trademark. Both the nature of Respondent’s pay-per-click hyperlinks to Complainant’s competitors, as well as Respondent’s exorbitant offer to sell the disputed domain name, support the Panel’s conclusion that Complainant has established 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 Phillip V. Marano
Sole Panelist
Date: February 4, 2020
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