The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Jacob Moore, Wild Fox, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On September 1, 2021, 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 the Complainant on September 10, 2021, 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 the same day.
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 September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 19, 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 BackgroundThe Complainant is a travel company. It holds multiple trademark registrations in multiple jurisdictions, including the following:
- United Kingdom trademark registration number UK00002313196 for SKYSCANNER, registered on April 30, 2004, specifying services in classes 35, 38 and 39, including certain travel information and arrangement services; and
- International trademark registration number 1030086 for SKYSCANNER, registered on December 1, 2009, designating multiple jurisdictions and specifying services in classes 35, 39 and 42, including certain travel information and arrangement services.
The above trademark registrations remain current. The Complainant has registered the domain name
The Respondent is named as an individual and a business.
The disputed domain name was registered on April 12, 2021 and does not resolve to any active website. However, according to DNS mail exchange (“MX”) records submitted by the Complainant, the disputed domain name is configured to direct email to a server.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s SKYSCANNER mark. The Complainant’s website currently attracts 100 million visits per month while its smart device application has been downloaded over 70 million times.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The term “Skyscanner” is not descriptive in any way, nor does it have any dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. MX records indicate that the Respondent intends on using the disputed domain name to communicate with consumers. There can be no plausible explanation for this other than to mislead consumers into believing that they are communicating with the Complainant’s business to purchase travel tickets.
The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the disputed domain name was registered, by which point the Complainant already enjoyed global fame in its trademarks.
There is a serious risk that the Respondent intends on communicating with consumers through the “(...)@skyscannertickets.com” email addresses, posing as the Complainant’s business to sell tickets for travel.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that a complainant must prove each of the following 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.
Based on the evidence presented, the Panel finds that the Complainant has rights in the SKYSCANNER mark.
The disputed domain name wholly incorporates the SKYSCANNER mark as its initial element. It also includes the dictionary word “tickets”. Given that the mark remains clearly recognizable in the disputed domain name, the addition of this word does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The disputed domain name also includes a generic Top‑Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain name does not resolve to any active website but it is configured to direct email to a server. The combination of the Complainant’s mark and the word “tickets” is presumably intended for use in connection with the offering of travel tickets for sale. The Complainant submits that it has not given its consent for the Respondent to use its registered trademarks in a domain name registration. In the Panel’s view, this evidence constitutes a prima facie case that the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Jacob Moore” and “Wild Fox”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the disputed domain name was registered in 2021, many years after the registration of the Complainant’s SKYSCANNER mark. The mark is not a dictionary word even though it is composed of two dictionary words. The disputed domain name incorporates the SKYSCANNER mark, with the word “tickets” added, which indicates a familiarity with the travel arrangement services offered by the Complainant. The Respondent offers no explanation for his choice of the disputed domain name. These circumstances give the Panel reason to find that the Respondent knew of the Complainant’s mark at the time at which he registered the disputed domain name.
With respect to use, the disputed domain name does not resolve to any active website but that does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant’s mark has acquired a strong reputation in the travel sector through use in connection with its popular travel booking website and smart device application. The disputed domain name wholly incorporates the SKYSCANNER trademark, with the word “tickets” added and it is presumably intended for use in connection with the offering of travel tickets for sale.
The configuration of the disputed domain name indicates that it is intended to be used at least with email but the email addresses will give the false impression that communications are sent by, or affiliated with, the Complainant. The Respondent provides no explanation of any intended good faith use of the disputed domain name. In these circumstances, the Panel finds that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom. See WIPO Overview 3.0, section 3.4; and Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions,WIPO Case No. D2016-2213.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. DecisionFor 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
Matthew Kennedy
Sole Panelist
Date: October 31, 2021