Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Whois Privacy, Private by Design LLC, United States of America (“United States”) / Adele Aronovna, Russian Federation. 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 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on January 30, 2020 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 February 3, 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2020. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 10, 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 Skyscanner Limited, located in London, United Kingdom. Complainant registered many trademarks and acquired trademark rights in the SKYSCANNER sign including the following ones: International Trademark, Registration No. 0900393 for SKYSCANNER, registered on March 3, 2006 designating European Union and covering services in classes 35, 38 and 39, and duly renewed since then; International Trademark, Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009 designating the Russian Federation and covering services in classes 35, 39 and 42, duly renewed since then. This trademark also designates inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Japan, Norway, European Union, Singapore, Turkey and Ukraine. Complainant also owned the Complainant’s trademarks are mainly used in connection with worldwide travel booking services. Respondent registered the disputed domain name on December 27, 2019 that was pointing to an inactive website at the time the Complaint was filed. 5. Parties’ Contentions A. Complainant Firstly, Complainant alleges it has rights in the SKYSCANNER sign, after having registered 91 trademarks, all over the world. Complainant argues that previous UDRP panels have already stated that it has rights in the said sign. Complainant also alleges that it benefits from a global reputation on the Internet. Complainant alleges that the disputed domain name Secondly, Complainant alleges that Respondent has no rights in the SKYSCANNER sign or any similar sign. It also argues that the term “Skyscanner” has no dictionary meaning and is highly distinctive. Complainant also argues that it did not give any consent nor authorization to Respondent to use its registered trademarks. It adds that Respondent is not commonly known as “skyscanner-id” and that Respondent’s interests cannot be legitimate nor is there a bona fide use. Furthermore, Complainant alleges that Respondent has not made demonstrable preparations to legitimately use the disputed domain name since it resolves to an inactive website. However, it would be inevitable for Internet users to believe there is an association between the disputed domain name and Complainant. Thirdly and finally, Complainant alleges that Respondent registered the disputed domain name with the knowledge of its rights, regarding its aggressive international growth and its global reputation and exposure. Respondent would have registered the disputed domain name in bad faith for illegitimate commercial purposes. Furthermore, Complainant alleges that Respondent retains a domain name that it could not use lawfully. This fact is constitutive of a use in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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) 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) 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”. Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of 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 Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test 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 disputed domain name”. See section 1.7 of the WIPO Overview 3.0. Complainant has shown that it has rights in the SKYSCANNER sign, in many countries. Indeed, it registered the sign in several forms and if some filling are still pending, many trademarks have already been registered. Furthermore, the Russian Federation has been designated under the International trademark Registration No. 1030086 and the protection has been granted. The disputed domain name is using the SKYSCANNER trademark in an identical form. The addition of the “-id” element does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. Moreover, Panel finds that this element may be confusing since it does not have specific meaning but may refer to “identity” or “identification” that are dictionary terms and could be used in relation to any kind of trademark. Furthermore, the gTLD “.icu” has to be considered as a technical element that does not take place in the scope of the risk of confusion evaluation. As UDRP panels generally consider “TLDs, such as ‘.icu’ 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” (See Sanofi v. Whois Privacy Protection Foundation / Richard Agu, Nduka,WIPO Case No. D2019-2524). Therefore, the Panel states that the disputed domain name is confusingly similar to Complainant’s trademarks. Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. Complainant has shown that it did not give any consent or authorization to Respondent to use its trademarks to register the disputed domain name. Yet, since Respondent did not register any trademark in “Skyscanner” or “Skyscanner-id”, and there is no evidence on record that Respondent is commonly known by the disputed domain name, it should be considered that Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, if Respondent were benefiting from any right in the SKYSCANNER sign, it would have responded to Complainant’s contentions, which it did not. Therefore, Panel considers that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Complainant argues that the disputed domain name was registered and is being used in bad faith. According to the fact that the disputed domain name is using Complainant’s trademark in its entirety, while the term “skyscanner” has no specific meaning, but is purely made up by Complainant, it may be constitutive of a bad faith registration. Therefore, the Panel considers that the disputed domain name has been registered in bad faith, with the knowledge of Complainant’s trademarks. Furthermore, it may be noted that previous UDRP panels have already stated the fact that the disputed domain name was pointing to an inactive website could be constitutive of a use in bad faith. See Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Miguel Angel, WIPO Case No. D2019-3131: “The fact that the Domain Name currently points to an error message does not prevent a finding of registration and use in bad faith where there is passive holding and use of a widely known trademark where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that on the balance of probability, the Respondent has registered and used the Domain Name in bad faith.” Finally, the Panel considers that Respondent’s lack of response to Complainant’s contentions benefits Complainant since Respondent did not even try to defend its case or even to argue in defense of its registration and use of the disputed domain name. Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith. In light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore satisfied 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 Nathalie Dreyfus
Sole Panelist
Date: March 20, 2020
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