The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC., United States of America / Domain Admin, Domain Registries Foundation, 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 January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 17, 2020, 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 January 20, 2020 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 amendment to the Complaint on January 22, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 26, 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, Skyscanner Limited, is the holder of several trademarks, including the following: - International trademark registration No. 900393 for SKYSCANNER, registered on March 3, 2006 in classes 35, 38 and 39, and - International trademark registration No. 1030086 for SKYSCANNER, registered on December 1, 2009 in classes 35, 39 and 42. Both trademarks designate several countries including the European Union. The Disputed Domain Name was registered on July 31, 2015 and currently points to a parking page containing pay-per-click (“PPC”) links referring to websites of some of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the Disputed Domain Name primarily to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. Moreover, the Complainant submits that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s SKYSCANNER trademarks have been registered and used in various countries in connection to the Complainant’s services. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety, simply adding the letter “f” as a prefix. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s SKYSCANNER trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, 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 in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was obviously not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists. Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name currently refers to a parking page with sponsored links related to services competing with the Complainant’s services. Additionally, there are no indications that the Respondent has made any efforts to suppress the commercial links on the website. Considering that the sponsored links displayed on the website connected to the Disputed Domain Name capitalize on the reputation and goodwill of the Complainant’s mark, the Panel finds that this cannot be considered as a fair use of the Disputed Domain Name (see section 2.9 of the WIPO Overview 3.0). The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith namely: “(i) circumstances indicating that you [the registrant] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Complainant states that the Disputed Domain Name was registered on July 31, 2019. However, the Panel notes that this is incorrect: the Disputed Domain Name was registered on July 31, 2015. The Panel also observes that the evidence advanced by the Complainant does not appear to clearly show the reputation of its trademark SKYSCANNER predates the Disputed Domain Name’s registration date. However, the Panel does note that the Complainant was founded in 2003, and has acquired the trademark rights in SKYCANNER at least from 2006. In addition, based on limited factual research and previous UDRP decisions, the Panel finds that the Complainant’s SKYSCANNER mark already enjoyed some reputation in 2015 (see e.g., Skyscanner Limited v. Basit Ali,WIPO Case No. D2012-1983: “The Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its ‘Skyscanner’ websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation among potential customers.”). In view of the above, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s trademark in its entirety. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trade marks in question, the inclusion of the entire trade mark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). The Respondent is not presently using the Disputed Domain Name other than in connection with a parking page with PPC links to websites competing with the Complainant’s services. In the present case, the Panel is of the opinion that the Complainant’s SKYSCANNER trademark is widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. Website content targeting the Complainant’s mark, e.g., through links to competitors of the Complainant, may indicate that the Respondent’s intent in registering the Disputed Domain Name was in fact to profit in some fashion from, or otherwise exploit, the Complainant’s trademark (see section 3.1.1 of the WIPO Overview 3.0). While the intention to earn click-through-revenue may not in itself be illegitimate, the Panel finds that the use of the Disputed Domain Name that is confusingly similar to the Complainant’s trademark to obtain click-through-revenue in this case constitutes bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). The fact that the PPC links may be automatically generated by a third party cannot discharge the Respondent of any responsibility for the content appearing on the website connected to the Disputed Domain Name under its control (see section 3.5 of the WIPO Overview 3.0). The Panel finds that by using the Disputed Domain Name incorporating the Complainant’s trademark in connection with a website containing sponsored links to competitors of the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 Flip Jan Claude Petillion
Sole Panelist
Date: March 10, 2020
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