Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (“United States”) / Bo Yu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2021. 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 Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for response was July 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent ’s default on July 22, 2021. The Center appointed Scott R. Austin as the sole panelist in this matter on August 2, 2021. 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 following facts appear from the Complaint and its Annexes, which have not been contested by Respondent. Complainant is an online travel company founded in the United Kingdom in 2001, and, since 2002, has been operating search engine and price comparison websites under the trademark SKYSCANNER (the “SKYSCANNER Mark”) in connection with flight search, travel information and price comparison services. Complainant’s official SKYSCANNER Website, accessed through its official domain names Complainant is the proprietor of numerous trademark applications and registrations containing the SKYSCANNER Mark covering a range of advertising, online travel information and search engine related services in jurisdictions around the world, such as International Trademark Registration No. 1030086 for SKYSCANNER, designating registered trademark protection in inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China (where Respondent appears to be located), Egypt, Japan, Mexico, Norway, Russian Federation, Singapore, Turkey and Ukraine, registered on December 1, 2009; United Kingdom Trademark Registration No. UK00002313916 for SKYSCANNER registered on April 30, 2004; and New Zealand Trademark Registration No. 816550 for SKYSCANNER, registered on October 7, 2010. The disputed domain name was registered by Respondent on May 6, 2021, and resolves to a website featuring explicit sexual content, containing a large number of pornographic videos and images. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a response. Under paragraph 14 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”. Where no response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will address each of these requirements in turn. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and subsisting trademark registrations for its SKYSCANNER Mark, which Mark has been found by prior UDRP panels to be well-known. See, e.g., Skyscanner Limited v. Sachin Rawat, Farebulk,WIPO Case No. D2018-0959 (referring to the notoriety of the SKYSCANNER Mark as having a high degree of recognition around the world); Skyscanner Limited v. Mohan Pillai,WIPO Case No. D2019-0690 (SKYSCANNER Mark having worldwide recognition). With Complainant’s rights in the SKYSCANNER Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s SKYSCANNER Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, sections 1.11.1 and 1.7. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; see also WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). The disputed domain name incorporates Complainant’s SKYSCANNER Mark in its entirety with one minor distinction, the insertion of a second occurrence of the letter “r” in the Mark. This added letter does not significantly affect the appearance or pronunciation of the disputed domain name. The disputed domain name, therefore, is essentially identical to Complainant’s official domain name Prior UDRP panels have also found a difference of only one letter between a disputed domain name and a complainant’s mark does not prevent a finding of confusing similarity. See, e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 ( Complainant’s SKYSCANNER Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the SKYSCANNER Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c). Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation or connection with Complainant did not consent, license or authorize Respondent to use the SKYSCANNER Mark in any manner, including the registration of a domain name, much less the registration of a domain name to access a website with pornographic content. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272. Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Domain Administrator, PrivacyGuardian.org”. The Registrar disclosed the underlying registrant, “Bo Yu”, which has been added to the amended Complaint to include this registrant as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”). A respondent not commonly known by the disputed domain name evinces a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008- 0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name resolves to a website Respondent is using to commercially advertise and distribute pornographic content employing pay-per-click (“PPC”) links. Complainant further contends that the PPC links present on the website to which the disputed domain name points not only prove that Respondent’s interest in the disputed domain name is a commercial one, but that it is pointed to a pornographic website to increase the threat of reputational harm to Complainant, thereby increasing the value and urgency of Complainant to purchase the disputed domain name from Respondent. Prior UDRP panels have held that while an adult-oriented website is not illegitimate per se, using a domain name that is confusingly similar to a complainant's trademarks to attract users to a respondent's commercial site is not a bona fide offering of services. See VKR Holding A/S v. cui jian jun,WIPO Case No. D2016-1385. The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows Respondent’s website prominently features such adult material while using Complainant’s SKYSCANNER Mark with PPC links to somehow suggest an affiliation with or sponsorship by Complainant. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”,WIPO Case No. D2012-2525. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non- exclusive) factors set forth in the Policy, paragraph 4(b): (i) circumstances indicating that the registrant has registered, or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. The Panel finds that Respondent has registered and used the disputed domain name in bad faith for at least the following reasons. First, Complainant contends and has provided persuasive support that Respondent registered the disputed domain name fully aware of Complainant’s rights, showing that the registration date of the disputed domain name is subsequent to when Complainant registered the SKYSCANNER Mark in China where Respondent appears to reside, and elsewhere, by many years and, therefore, Respondent cannot claim to have been using the SKYSCANNER Mark without being aware of Complainant’s rights to it. Complainant’s evidence in support of its allegations is sufficient for the Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s famous SKYSCANNER Mark, registered in the United Kingdom since 2004 and internationally since 2009 and designating China (supra), when Respondent registered the disputed domain name at least 12 years later in June 2021. Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of Complainant’s rights given the worldwide recognition of Complainant’s SKYSCANNER Mark. See cases cited under Section 6A above, e.g., Skyscanner Limited v. Sachin Rawat, Farebulk, supra. The Panel finds that given the many years of prior use of Complainant’s SKYSCANNER Mark prior to Respondent’s registration of the disputed domain name, the worldwide recognition of the SKYSCANNER Mark, and Respondent’s replication of Complainant’s SKYSCANNER Mark in its entirety in the disputed domain name, Respondent registered the disputed domain name with actual knowledge of Complainant’s SKYSCANNER Mark in bad faith. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624; see also WIPO Overview 3.0, section 3.2.2; see, e.g., eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks is a factor supporting bad faith). Moreover, the UDRP panel in Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273, stated that, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Respondent has had multiple opportunities to explain and justify how Respondent came to register the disputed domain name but has failed to do so. Indeed, the fact that Respondent has elected not to appear in this proceeding underscores that Respondent likely has no valid explanation for Respondent’s actions, which to this Panel appears on the evidence submitted to have been undertaken in bad faith. See, e.g., Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot,WIPO Case No. D2019-2521. Finally, Complainant contends Respondent’s actions constitute registration and use of the disputed domain name in bad faith because using the website related to such domain name in connection with a commercial website providing pornographic content, Respondent was, in all likelihood, trying to divert traffic intended for Complainant's website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. Prior UDRP panels have found such conduct as grounds for finding bad faith registration and use under paragraph 4(b)(iv) of the Policy. See V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama,WIPO Case No. D2010-0715. Moreover, as mentioned above, the disputed domain name is connected to websites featuring sexually explicit, pornographic content, not related to Complainant in any way. Prior UDRP panels have consistently held that a respondent’s use of a widely known trademark in connection with a confusingly similar domain name to direct unsuspecting Internet users to a pornographic website, as here, has been found to be bad faith registration and use of that domain name. See La Quinta Worldwide, LLC v. Andirich, AndiPerdana / WhoisGuard Protected,WIPO Case No. D2011-1684; see also Bayerische Motoren Werke AG v. Victor Frankl,WIPO Case No. D2013-0701 (“In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith for a variety of reasons, particularly because of Respondent’s use of the Disputed Domain Name for an adult-content website. The Panel finds in this respect that such use must be considered as tarnishing the Trademark and the Complainant and therefore constitutes an evidence of a bad faith use of the Disputed Domain Name under the Policy.”). This Panel finds the same conclusion should be reached here because Respondent is using the SKYSCANNER Mark within the disputed domain name to attract visitors and then redirect them to its website featuring adult content. The Panel finds Complainant’s arguments and evidence persuasive, and no arguments or evidence have been submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith and Complainant has 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 Scott R. Austin
Sole Panelist
Date: August 16, 2021
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