The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Domain Admin, Privacy Protect LLC, United States of America / Jonny Rios, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 23, 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 December 30, 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 January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2020. The Center appointed Fabrice Bircker as the sole panelist in this matter on January 30, 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 The Complainant runs a travel search and comparison website named Skyscanner. This website, notably available through the domain name Besides, it results from the record of the case that this website has been subject to a wide media exposure in 2016 when it was acquired for USD 1.7 billion by Ctrip, a Chinese online travel agency. The Complaint also shows that the name and the activities of the Complainant are protected by a wide trademarks portfolio. Among many others, the Complainant holds the following trademarks: - International trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006, in classes 35, 38, and 39 and protected in the European Union and in the United States of America; - International trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, in classes 35, 39, and 42, and protected in numerous territories all over the world, including China, European Union, Israel, Japan, Morocco, Russian Federation and Mexico; - Canadian trademark Registration No. TMA786689 for SKYSCANNER, registered on January 10, 2011 for services belonging to classes 35, 39, and 42. Previous UDRP panels have recognized that the Complainant’s trademarks are well known and enjoy a strong reputation (see for instance Skyscanner Limited v. Basit Ali,WIPO Case No. D2012-1983 and Skyscanner Limited v. Mohit Bajaj,WIPO Case No. D2016-1481). Very little is known about the Respondent, except that it is domiciled in Mexico. The disputed domain name was registered on October 31, 2019. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant invokes many registered trademarks that it owns containing the term SKYSCANNER protected in numerous countries all over the world. It also put forwards that it has a substantial reputation. The Complainant points out that the disputed domain name reproduces its SKYSCANNER trademark in its entirety and adds the term “mx”, which is the country code for Mexico. The Complainant contends that for the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”). Rights or Legitimate Interests The Complainant states that so far as it is aware, the Respondent does not own any registered rights in any trademarks which comprise part or the entirety of the disputed domain name. The Complainant also puts forward that the mark SKYSCANNER is not descriptive in any way, nor does it have any generic, dictionary meaning. It adds that this term is highly distinctive in the context of the services designated by the corresponding trademark. Therefore, according to the Complainant, there is no cause for any party other than the Complainant to use SKYSCANNER as a trademark in the course of business. The Complainant asserts that it has not given its consent for the Respondent to use its registered trademark in a domain name registration (or in any other manner). The Complainant also contends that to the best of its knowledge the Respondent is not commonly known as “Skyscanner MX”. The Complainant also submits that even if the Respondent would refer to itself as “Skyscanner MX”, such use of its name would constitute bad faith insofar as the Respondent’s interest could not be legitimate. The Complainant also contends that the disputed domain name does not resolve to an active website and that there is therefore no evidence that the Respondent has made demonstrable preparations to use it for legitimate purposes, nor is there any evidence that the Respondent is using it in connection with a bona fide offering of goods and/or services. At last, the Complainant also considers that given the famous nature of its SKYSCANNER trademark and the fact that no other individual or business owns rights (whether registered or unregistered) in this trademark, not only is it highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name, but it is also inevitable that visitors to the website connected to the disputed domain name would mistakenly believe there to be an association with the Complainant. Registration and Use in Bad Faith The Complainant states that the disputed domain name was registered 17 years after it secured registration for its SKYSCANNER trademark in Canada. The Complainant submits that the Respondent registered the disputed domain name in the knowledge of its rights because at the time of the registration of the disputed domain name the Complainant enjoyed a global reputation in its SKYSCANNER trademark, following 17 years of international growth and 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, in a deal worth approximately GBP 1.4 billion. The Complainant submits that on the balance of probability, it can be no coincidence that the Respondent chose to register a domain name that replicates its distinctive trademark. As a consequence, the Complainant considers that the Respondent registered the disputed domain name in bad faith. Besides, the Complainant contends that passive holding of a disputed domain name which cannot be used legitimately by anyone other than the trademark holder constitutes registration and use in bad faith insofar as the disputed domain name is being used as a blocking registration, preventing the Complainant from using it for legitimate commercial purposes. The Complainant adds that it is entirely reasonable to suggest that it has cause to use the disputed domain name for legitimate commercial purposes since (a) the disputed domain name replicates its trademark exactly and (b) the Complainant provides its services to the Mexican market (through the website available at the address “www.espanol.skyscanner.com”). Besides, according to the Complainant, it is logical to consider that if the Respondent does point the disputed domain name to an active website in the future such use can only be designed to take unfair advantage of the reputation in the Complainant’s rights. The Complainant submits that 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 damage to the reputation that the Complainant enjoys in its SKYSCANNER trademark. The Complainant also contends that it is implausible to presume that the Respondent chose to adopt the SKYSCANNER trademark in the disputed domain name for any other reason than to deliberately create a false impression of an association with the Complainant and to target its business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements: (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. Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Furthermore, paragraph 14(b) of the Rules provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. At last, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark. Annex 2 to the Complaint shows trademark registrations for SKYSCANNER in the name of the Complainant, in particular: - International trademark Registration No. 900393 registered on March 3, 2006, in classes 35, 38, and 39 and protected in the European Union and in the United States of America; - International trademark Registration No. 1030086 registered on December 1, 2009, in classes 35, 39, and 42, and protected in numerous territories all over the world, such as China, European Union, Israel, Japan, Morocco, Russian Federation and Mexico; - Canadian trademark Registration No. TMA786689 registered on January 10, 2011, for services belonging to classes 35, 39, and 42. Besides, there is no difficulty in finding that the disputed domain name is confusingly similar to the SKYSCANNER trademark. Indeed, the disputed domain name reproduces identically the Complainant’s trademark. Besides, the adjunction of the two letters ISO code 3166-1 “mx” which identifies Mexico does not prevent the SKYSCANNER trademark from remaining clearly recognizable within the disputed domain name. As far as the gTLD “.com” is concerned, it is a standard registration requirement which may be disregarded when determining identity or confusing similarity under the first element. Consequently, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 procedure, the Complainant contends that it has not given its consent for the Respondent to use its SKYSCANNER registered trademark in a domain name registration or in any other manner. Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Furthermore, the disputed domain name is not used (it resolves to an inactive website) and nothing in the case file suggests that the Respondent has made preparations to use it for legitimate purposes. In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests. The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. As a consequence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The circumstances listed in paragraph 4(a)(iii) of the Policy are only examples and therefore are not exhaustive of the situation of bad faith. Registration in bad faith As evidenced by the Complainant: - its prior SKYSCANNER trademark is well known (the website it identifies generates a considerable traffic, this trademark has enjoyed an important media coverage and previous UDRP decisions have already recognized its well-known feature and/or its strong reputation, for instance Skyscanner Limited v. Basit Ali, supra or Skyscanner Limited v. Mohit Bajaj, supra); - the Respondent has used a privacy service to conceal its identity and the contact details it has provided to the Registrar seem to be incomplete (in particular, they do not include the name of any street); - the disputed domain name combines the Complainant’s trademark with the term “mx” which refers to Mexico, a country where the Complainant is active and where its SKYSCANNER trademark is protected. Moreover, the Respondent appears to be domiciled in Mexico. Therefore, the Respondent could not reasonably have no knowledge of the Complainant’s rights when registering the disputed domain name; - none of the arguments put forward by the Complainant has been denied by the Respondent, who has chosen not to participate to this procedure. In light of the above, the Panel finds that the Respondent registered the disputed domain name in bad faith, with the Complainant’s SKYSCANNER trademark in mind. Use in bad faith The disputed domain name is not used, as it resolves to an inactive website. However, in some situations, the non-use of a domain name does not prevent a finding of bad faith use. This point is notably dealt in section 3.3 of the WIPO Overview 3.0, which states: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” In the present case, all these criteria are met: - the SKYSCANNER trademark which is reproduced entirely in the disputed domain name is well known; - the Respondent did not reply to the Complainant’s contentions; - given the construction of the disputed domain name (in so far as it associates the Complainant’s well-known trademark with a country code corresponding to a territory where it is present), the Panel does not conceive how a third party could legitimately use the disputed domain name; - the Respondent concealed its identity using a privacy service, and the veracity of the contact details it has provided to the Registrar is doubtful (in particular because no street is mentioned whereas the Respondent has indicated to be domiciled in Mexico). As a consequence, the Panel concludes that the passive holding of the disputed domain name amounts to bad faith use in this case. In conclusion, on the basis of the evidence presented and the circumstances of this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, so paragraph 4(a)(iii) of the Policy is satisfied. 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 Fabrice Bircker
Sole Panelist
Date: February 10, 2020
Full & Egal Universal Law Academy