1.1 The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
1.2 The Respondent is Domain Proxy Service, Namesco Limited, United Kingdom / Omidreza Zaremoayedi, Skyscannersbed&breakfast, United Kingdom. 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 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 April 24, 2020. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2020. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 27, 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 4.1 The Complainant is a search engine specialising in providing travel arrangement services under the “Skyscanner” name. It is particularly well known for providing a flight price comparison service, but its services extend beyond this, and include the arrangement of temporary accommodation. 4.2 The Complainant business has benefited from a great deal of exposure in the international media, particularly when in November 2016, the Complainant was acquired by Ctrip, China’s largest on-line travel agency, in a deal worth approximately GBP 1.4 billion. 4.3 At the time of the Complaint, the Skyscanner website “www.skyscanner.net” attracts 100 million visits per month and, to date, 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. Further, as of November 12, 2019 the Complainant’s website “www.skyscanner.net” was ranked 1,671st globally for internet traffic and engagement and 107th in the United Kingdom. 4.4 The Complainant is the owner of various trade marks that comprise or incorporate the term “Skyscanner”. They include: (i) International trade mark registration no 900393 for the standard character mark SKYSCANNER, dated March 3, 2006, in classes 35, 38 and 39 and proceeding to registration in the United States and the European Union and based upon an earlier United Kingdom registered trade mark registered in 2002. (ii) International trade mark registration no 1030086 for the word mark SKYSCANNER, dated December 1, 2009, in classes 35, 39 and 42 and proceeding to registration in a large number of territories including the European Union and based upon an earlier United Kingdom registered trade mark registered in 2002. (iii) United Kingdom registered trade mark no 3401092 for the word mark SKYSCANNER, filed on May 21, 2019 and registered on August 9, 2019 in class 43. 4.5 The Domain Name was registered on March 27, 2020. It appears to have been passively held since its registration with a holding page being displayed from the Domain Name. 4.6 The Respondent would appear to be an individual based in the United Kingdom and in particular the NW9 postal district of London. 4.7 On April 6, 2020 a company was registered in England and Wales at Companies House with the name Sky Scanners Bed & Breakfast Limited. Its registered office is in Harlesden and its managing director gives an address in Wembley. Both Harlesden and Wembley are in Northwest London, albeit in different postal districts to NW9. 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that the Domain Name is confusingly similar to its registered trade marks in that it comprises its mark to which the phrase “bed and breakfast” has been added, and which phrase is said to be descriptive of a type of accommodation that can be booked through the Complainant. 5.2 The Complainant effectively contends that the registrant of the Domain Name and the persons controlling Sky Scanners Bed & Breakfast Limited are the same or closely connected. It maintains that this demonstrates that the Respondent is intending to use the Domain Name in connection with bed and breakfast services, that the choice of name of the name “Sky Scanners Bed & Breakfast” cannot be coincidental, that the Respondent must have known of the Complainant’s rights, and that “visitors to the Domain Name” would mistakenly believe that to be an association with the Complainant. In the circumstances, it contends that there is a prima facie showing of no right or legitimate interests and that the burden of demonstrating otherwise shifts to the Respondent. 5.3 In one part of its Complainant, the Complainant also appears to assert that that the Domain Name has been registered to make money in a way which is said to be unclear, but with possibilities including selling the Domain Name to the Complainant or a competitor, or by setting up its own flight fare aggregator. However, it then goes onto assert that it is “only a matter of time” before the Domain Name is used to advertise a bed and breakfast business in a manner that misleads consumers as to an affiliation with or connection to the Complainant when this is not the case. 5.4 Accordingly, it contends that although the Domain Name is currently being held passively, it has nevertheless been registered and held in bad faith. B. Respondent 5.5 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar 6.4 The Panel accepts that the most sensible readings of the Domain Name are as either “Sky Scanners Bed and Breakfast” or “SkyScanners Bed and Breakfast” with spaces omitted and together with the “.com” generic Top-Level domain (“gTLD”). 6.5 The Complainant contends that the Domain Name comprises its SKYSCANNER mark combined with the phrase “bed and breakfast”. This is not quite right since there is also the additional letter “s” in the Domain Name. But that addition is not significant. For the purposes of the first element of the Policy it is sufficient that the relevant mark relied upon being recognisable in the domain name. In this respect see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The trade mark is clearly recognisable in this case. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 6.6 There are parts of the Complaint that suggest that the Domain Name may have been registered for the purposes of sale or setting up a competing website to the Complainant. However, the language used is a little odd (for example referring to the registration of domain names plural). If this text is ignored, the thrust of the Complainant’s allegations are quite clear. It is that the Domain Name and the company name “Sky Scanners Bed and Breakfast Limited” were both registered with the intention of taking advantage of an association with the name of the Complainant’s business, and that this was done with the intention of benefiting a business, most likely a bed and breakfast business, operating from the company. In essence the Panel accepts that this is right. 6.7 Dealing first with the question of the connection between the Domain Name and the company, the timing of the two registrations (being only 10 days apart) and the multiple connections with north west London is strong circumstantial evidence in this regard. There is also no real suggestion, and certainly no evidence before the Panel, that the company registration is a sham in order to disguise some other intention so far as the Domain Name is concerned. 6.8 Further, the Panel is satisfied from the case file that the Complainant has been provided not just to the registrant of the Domain Name but also to a director of Sky Scanners Bed and Breakfast Limited. Were there no connection between Respondent and the company, one would have expected some from of intervention or communication from the company in this respect, and nothing has been forthcoming. 6.9 The reasons why the Panel is satisfied that the name “Sky Scanners Bed and Breakfast” was chosen for both the Domain Name and the business because of its associations with the Complainant, is dealt with in greater detail in the bad faith element of this decision. 6.10 Paragraph 4 (c)(i) of the Policy identifies as an example of rights or legitimate interests the use of or demonstrable preparations to use a domain name in connection with a bona fide offering of goods and services. Nevertheless, the offering of goods and services under a domain name that seeks to take advantage of the reputation of another person is not considered to be a bona fide offering under the Policy. Where such a business has been established for some time a panel needs to proceed with particular care as this adds a number of further complications (see for example Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon,WIPO Case No. D2016-1455). But there is no such complication in this case, where there is no evidence that the company has even started to trade. 6.11 In the circumstances, the Complainant has made out the requirements of paragaph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 6.12 The Panel is satisfied that the Domain Name was registered with the intention of taking advantage of the Complainant’s name and business for the benefit of business operating under Sky Scanners Bed and Breakfast name. 6.13 First, there is the undoubted high degree of reputation of the Complainant’s name and marks. The Panel has little doubt that the person or persons behind the registration of the Domain Name and the company name would have been well aware of the Complainant. 6.14 Second, there is the fact that “Bed and Breakfast” is an obvious reference to “Bed and Breakfast” accommodation and the Complainant provides services that among other things include the arranging of this sort of accommodation. 6.15 Third, there is the fact that “Sky Scanner” is not a name that obviously lends itself to a “Bed and Breakfast” business (or for that matter the operation of an unlicensed restaurant or café, which is identified as the relevant category of business for the company at Companies House). 6.16 Finally there is the fact that if that name had been innocently chosen without any intention of referring to the Complainant one would have expected the Respondent or the company to say so. It did not. 6.17 The only reasonable conclusion in those circumstances is that notwithstanding the addition of a space between “Sky” and “Scanner” and the addition of the letter “s”, a deliberate reference is being made to the Complainant and its marks with a view of taking financial advantage of that association. 6.18 In the circumstances, the Complainant has made out the requirements of paragaph 4(a)(i) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Matthew S. Harris
Sole Panelist
Date: June 6, 2020
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