Complainant is Skyscanner Limited, United Kingdom (Complainant), represented by Keltie LLP, United Kingdom.
Respondent is Contact Privacy Inc. Customer 0150102581, Canada / Airai Holdings, Palau (hereinafter “Respondent”).
The disputed domain names <skayskanner.com> and <skysckanner.com> are registered with Tucows Inc. (the “Registrar”).
The Complaint with regard to the disputed domain name <skayskanner.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <skayskanner.com>. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <skayskanner.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 22, 2019, 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 November 27, 2019, adding the disputed domain name <skysckanner.com>. On November 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <skysckanner.com>. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the disputed domain name <skysckanner.com> and providing the contact details.
The Center verified that the Complaint together with 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 November 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 20, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 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.
Complainant is an Internet provider of advertising and related services related to the travel industry. Complainant has registered trademark rights in the mark SKYSCANNER. Its International registration of the mark dates from as early as March 3, 2006, and it has trademark registrations in many countries, including Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Japan, Norway, the Russian Federation, Singapore, Turkey, and the Ukraine. Complaint, Annex 2.
Complainant is the registrant of the domain name <skyscanner.net> and uses it to resolve to its website which has 100 million visits per month. Its SKYSCANNER smart device app has been downloaded over 70 million times. Its services are available in over thirty languages in seventy countries. Its website was ranked the one thousand six hundredth seventy-first website in the world for Internet traffic and engagement. Complaint, Annexes 3 and 4
In November 2016, Complainant was acquired by Ctrip, China’s largest online travel agency. The transaction was worth approximately GBP 1.4 billion. The acquisition resulted in many articles in the various business press around the world. Complaint, Annex 6.
Respondent was initially identified as Contact Privacy Inc. Customer 0150102581 concerning the registration of the disputed domain name <skayskanner.com>. Respondent was initially identified as Contact Privacy Inc. Customer 0150101768 concerning the registration of the disputed domain name <skysckanner.com>. The Registrar has since identified Airai Holdings as the registrant of both of the disputed domain names.
The disputed domain name <skayskanner.com> was registered on May 25, 2010. Complaint, Annex 1.
Until approximately December 4, 2017, the disputed domain name <skayskanner.com> was owned by Contact Privacy Inc. Customer 0131203323. By March 1, 2018, the disputed domain name <skayskanner.com> was owned by Contact Privacy Inc. Customer 0150102581. Thus, it appears that the domain name <skayskanner.com> was acquired by Respondent no earlier than December 5, 2017. Complaint, Annex 5.
The disputed domain name <skysckanner.com> was registered on March 6, 2011. Complaint, Annex 1. Until approximately February 17, 2017, the disputed domain name <skysckanner.com> was owned by Contact Privacy Inc. Customer 0130186485. By December 21, 2017, the disputed domain name <skysckanner.com> was owned by Contact Privacy Inc. Customer 0150101768. Thus, it appears that the disputed domain name <skysckanner.com> was acquired by Respondent no earlier than February 18, 2017. Complaint, Annex 5.
Both disputed domain names currently redirect to Complainant’s website. The disputed domain names are each listed for sale on the web site of Afternic.com, each requiring a minimum offer of USD 400.
Complainant contends that the disputed domain names are confusingly similar to its registered SKYSCANNER trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that each of the disputed domain names has been registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name <skayskanner.com> consists of Complainant’s well-known trademark SKYSCANNER with the addition of an “a” in the initial SKY portion of the mark and the substitution of a “k” for the “c” in the SCANNER portion of the SKYSCANNER trademark. The disputed domain name <skysckanner.com> inserts a “k” after the “c” in the SKYSCANNER mark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s well-known trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent has listed the disputed domain names for sale at an online site that serves as a marketplace for domain names. Moreover, the disputed domain names are similar to and almost identical with Complainant’s trademark and Internet tradename, both of which are well-known and both of which predate the registration of the disputed domain names. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Moreover, the disputed domain names are so close to and so suggestive of Complainant’s well-known trademark that the Panel can conceive of no legitimate use to which the trademarks can be put. This in itself is an indicia of bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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 names <skayskanner.com> and <skysckanner.com> be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: January 23, 2020