Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, Domains ByProxy.com, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name <1skyscanner.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 18, 2019.
The Center verified that the Complaint together with the amendment to 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 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, on January 13, 2020, the Center notified Respondent’s default.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 22, 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. It began its operations in 2003. In 2016, Ctrip acquired the company for GBP 1.4 billion.
Complainant owns the following trademark registrations:
SKYSCANNER, International Trademark Registration No. 900393, registration date March 3, 2006, covering advertising services provided via the Internet, opinion polling, data processing, provision of business information, business information services, namely data feeds, auctioneering; all relating to travel in Class 35; providing access to a search engine relating to travel in Class 38, and travel information and arrangement services provided from an Internet website; providing information via means of a global computer network in relation to travel; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology in Class 39;
SKYSCANNER, International Trademark Registration No. 1030086, registration date December 1, 2009, covering advertising services provided via the Internet, opinion polling, data processing, provision of business information, data feeds, auctioneering, all relating to travel, in Class 35; travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology in Class 39; and operating of a search engine relating to travel in Class 42.
In addition, Complainant owns trademark registrations for SKYSCANNER, inter alia, in India (Registration No. 1890840, registered on December 2, 2009), United Kingdom (Registration No. 2313916, registered on April 30, 2004), Canada (Registration No. TMA786689, registered on January 10, 2011) and New Zealand (Registration No. 816550, registered on December 1, 2009).
The disputed domain name was registered on November 11, 2019.
Depending on the browser used by the visitor, the website at the disputed domain name redirects either to Complainant’s official website “www.skyscanner.net”, or to a list of “related links” such as “Travel Cheap Flights”, “Cheap Flights Browser”, “Flight Browser”, “Cheap Fight Comparator”, “Skyscanner Cheap Flights”, “Skyscanner Fights” and “Cheap”. Some of these links offer services in competition with Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends the following:
The disputed domain name is virtually identical to Complainant’s mark SKYSCANNER. The disputed domain name adds the number “1” at the beginning of Complainant’s trademark, which is not sufficient to render the visual or phonetic characteristics of the disputed domain name distinct from Complainant’s trademark. The disputed domain name remains visually, aurally and conceptually similar to a high degree with Complainant’s mark. The disputed domain name is a deliberate misspelling of Complainant’s mark.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. The term “Skyscanner” is not descriptive in any way, nor does it have any generic or dictionary meaning. Complainant has not given its consent for Respondent to use a virtually identical variation of its registered trademarks in a domain name registration.
To the best of Complainant’s knowledge, Respondent is not commonly known as “Skyscanner” or “1Skyscanner”. Even if Respondent does refer to itself as “Skyscanner” or “1Skyscanner”, Respondent’s use of this name constitutes bad faith insofar as Respondent’s interest cannot be legitimate nor is there a bona fide use of the disputed domain name.
The disputed domain name automatically redirects to Complainant’s website, “www.skyscanner.net”. There is no evidence that Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes or in connection with a bona fide offering of goods and services. Specifically, the use of a domain name that is virtually identical to Complainant’s rights, to direct consumers to Complainant’s website cannot constitute a legitimate interest or a bona fide use of the domain name.
Complainant’s trademark is famous and no other individual or business owns rights in this mark. It is likely that Respondent was aware of Complainant’s rights prior to acquiring or registering the disputed domain name. Inevitably, visitors to the website at the disputed domain name would mistakenly believe there to be association with Complainant.
Lastly, Complainant contends that the disputed domain name was registered and is being used in bad faith. On November 11, 2019, Respondent registered the disputed domain name in the knowledge of Complainant’s rights in the SKYSCANNER mark. By such date, the SKYSCANNER trademark enjoyed a global reputation, following 17 years of aggressive international growth and through exposure in the international media in November 2016, after Complainant was acquired by Ctrip, China’s largest online travel agency in a deal worth approximately GBP 1.4 billion.
Upon registration, the disputed domain name was pointed to Complainant’s website, to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, to take unfair advantage of the reputation in Complainant’s rights. Further, Respondent acquired the disputed domain name primarily for selling it to Complainant or to a competitor of Complainant, for valuable consideration (USD 899) in excess of its documented out-of-pocket costs directly related to the disputed domain name. In addition, UDRP panels have found that there can be a finding of registration and use in bad faith in a domain name where there is passive use of a widely known trademark, where there is no response and no explanation as to why the use could be in good faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts of the corresponding official trademark databases, Complainant has shown to the satisfaction of the Panel that it has rights in the SKYSCANNER trademark. See section 4 above.
The Panel notes that the disputed domain name entirely incorporates Complainant’s trademark SKYSCANNER as a relevant element, with the only addition of the number “1” as a prefix, plus the — technically necessary — generic Top-Level-Domain “.com”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)
The Panel finds that the disputed domain name is confusingly similar to the SKYSCANNER mark, in which Complainant has rights. B. Rights or Legitimate Interests
The Panel notes that the registrant of record of the disputed domain name is Carolina Rodrigues, Fundacion Comercio Electronico. There is no evidence that this person or entity is known by the disputed domain name. Thus, Policy paragraph 4(c)(ii) does not apply. The Panel also notes that there is no evidence of any authorization or license granted by Complainant to Respondent to use the SKYSCANNER mark in any way. Instead, Complainant has shown that the disputed domain name is being used to redirect traffic to Complainant’s official website, a clearly parasitic usage that certainly is not in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i).
This Panel, under its general powers pursuant to Rules paragraph 10(a), visited the website at the disputed domain name, noting that the website is displaying a list of “related links” such as “Travel Cheap Flights”, “Cheap Flights Browser”, “Flight Browser”, “Cheap Fight Comparator”, “Skyscanner Cheap Flights”, “Skyscanner Fights” and “Cheap”, on which services in competition with Complainant are being offered.1 To the extent that this use is aimed at obtaining click- through income from these redirections, by misleading Internet users presumably looking for Complainant’s services, this is neither a bona fide use according to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use pursuant to Policy paragraph 4(c)(iii).
Thus, Complainant has succeeded in raising a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name. Since Respondent failed to submit any evidence for its or reasons for having registered the disputed domain name or for using it as shown, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that Complainant’s registrations of its mark SKYSCANNER predate the registration of the disputed domain name by well over a decade. See section 4 above. In addition, Complainant has shown that at the time of the registration of the disputed domain name, the SKYSCANNER mark had already acquired a solid renown in the field of travel booking services provided via the Internet. In particular, Complainant has shown that in November 2016, the press announced that Ctrip, a Chinese leader in the market of travel booking, was acquiring Complainant for about GBP 1.4 billion. Annex 5 to the Complaint. From these facts, the Panel concludes that Respondent had Complainant in mind, and targeted its mark SKYSCANNER and its services at the time of registering the disputed domain name. Considering the circumstances of this case, this means that such registration was in bad faith.
Complainant also has shown that Respondent’s website at the disputed domain name is being used to divert Internet traffic to Complainant’s official website. As seen above, the Panel while visiting the website at the disputed domain name noticed that traffic, via “related links”, is being redirected to websites offering travel services in competition with Complainant, thus intentionally attempting to attract, for commercial gain from click -through income, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to Policy paragraph 4(b)(iv), this is evidence of registration and use in bad faith of the disputed domain name.
Further, as shown by Complainant, Respondent in cooperation with Sedo.com, has been offering to sell the disputed domain name by eliciting purchase offers for a minimum amount of USD 899, clearly in excess of its documented out-of-pocket costs directly related to the disputed domain name. This is additional evidence of registration and use in bad faith under Policy paragraph 4(b)(i).
Lastly, the Panel notes that Respondent failed to make any submission in this proceeding, and that the courier entrusted with delivering the notice of the Complaint was unable to do so because the mail address provided by Respondent at the time of registering the disputed domain name was wrong or incomplete, in violation of its duties under the registration agreement.
For all these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 <1skyscanner.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: January 28, 2020
1 See WIPO Overview 3.0, section 4.8 (“May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent (…)”)
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