The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Sunne Khurana, Eros Group, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. Accordingly, the Center notified the Respondent’s default on May 19, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 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. After the Notification of Respondent Default, several communications were sent between the Parties copied to the Center in which a possible settlement was addressed. However, the Complainant requested the Center to proceed with a decision. 4. Factual Background The Complainant is an online travel website, agency and metasearch engine. The Complainant obtained registrations for the trademark SKYSCANNER in numerous regions of the world, including the International Trademark Registrations Numbers 900393 (designating among others the United States of America) and 1030086, registered respectively on March 3, 2006 and on December 1, 2009. The disputed domain name According to the Complaint, the disputed domain name resolved to a website offering pay-per-click (“PPC”) links relating to the Complainant’s area of business. The Panel accessed the disputed domain name on June 6, 2020, at which time the disputed domain name did not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s website at “www.skyscanner.net” attracts 100 million visits per month and its SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies. The disputed domain name is identical to the Complainant’s registered trademark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”). - The Respondent has no rights or legitimate interests in respect of the disputed domain name. So far as the Complainant is aware, the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name. The term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. The Complainant has not given its consent for the Respondent to use a virtually identical variation of its registered trademark in a domain name registration. To the best of the Complainant’s knowledge the Respondent is not commonly-known as “skyscanner”. However, even if the Respondent does refer to itself by this name, the Complainant submits that the Respondent’s use of this name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the disputed domain name. The disputed domain name pointed to a parking page containing PPC links to services in direct competition with those of the Complainant. There is no evidence of that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Given the famous nature of the Complainant’s mark and the fact that no other individual or business owns trademark rights (whether registered or unregistered) in the SKYSCANNER trademark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name but it is inevitable that visitors to the disputed domain name would mistakenly believe there to be association with the Complainant. The Complainant has submitted a prima facie showing that the Respondent has no rights or legitimate interests in respect of the domain name. - The disputed domain name was registered and is being used in bad faith. The disputed domain name was originally registered on May 28, 2016. The Complainant submits that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark rights. In 2016, the Complainant enjoyed a global reputation in its SKYSCANNER trademark, following fourteen years of aggressive international growth. The Reverse WhoIs search conducted against the Respondent’s email address, demonstrates the Respondent has registered a large number of domain names that relate to the travel industry – specifically flight booking services in which the Complainant enjoys a global reputation – such that it is implausible to suggest that the Respondent was unaware of the Complainant’s reputation at the time it registered the disputed domain name. Regarding use of the disputed domain name in bad faith, the Complainant notes that the Respondent chose to register a domain name incorporating the Complainant’s trademark in order to attract traffic to its website and encourage them to access the PPC links displayed, thereby generating revenue for the Respondent. In the circumstances, the Complainant submits that the disputed domain name is used to mislead consumers as to an affiliation with or connection to the Complainant, for commercial gain. Further, the Complainant submits that the disputed domain name is used as a blocking registration inasmuch as the Complainant is prevented from registering and using a domain name containing its trademark. Moreover, it is logical to suggest 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 trademark 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 inevitable damage to the reputation that the Complainant enjoys in its SKYSCANNER trademark. Finally, UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trademark in a domain name where there is no response and no explanation as to why the use could be good faith. B. Respondent The Respondent did not reply to the Complainant’s contentions, but essentially informed the Center and Complainant that he would let the disputed domain name expire, not contesting the specific grounds of the Complaint. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove 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; 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. A. Identical or Confusingly Similar The Panel has no doubt that “skyscanner” is a term directly connected with the Complainant’s widely-known travel website and application. Annex 2 to the Complaint shows International trademark registrations for SKYSCANNER obtained by the Complainant as early as in 2006. The trademark SKYSCANNER is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark SKYSCANNER merely by the addition of the gTLD “.site”. It is already well established that the addition of a gTLD extension such as “.site” may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name has been used in connection with PPC links related to travel services. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “skyscanner.site” was chosen to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2016, the trademark SKYSCANNER was already widely known and directly connected to the Complainant’s online travel services. The disputed domain name encompasses the trademark SKYSCANNER, which is a neologism with no dictionary meaning. The addition of the gTLD “.site” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official “site” of the Complainant. According to the section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence. Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances in this case, including: (a) the Respondent not presently using the disputed domain name; (b) the Respondent not indicating any intention to use the disputed domain name; (c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark, and indicting it would let the disputed domain name expire; (d) the former use of the disputed domain name in connection with PPC links, potentially generating profits from links related to travel services; and (e) the lack of any plausible good faith reason for the adoption of the term “skyscanner” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 Rodrigo Azevedo
Sole Panelist
Date: June 9, 2020
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