Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Keltie LLP, United Kingdom.
Respondent is Egor Kargapolov of Ishim, Tyumenskaya Oblast, Russian Federation.
The disputed domain name <skyscanner.pro> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2018, 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 Respondent of the Complaint, and the proceedings commenced on April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 1, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 17, 2018. 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 operates a global travel search website. Complainant also provides services related to corporate travel. According to information provided on its official website "www.skyscanner.com", Complainant was founded in 2003, employs over 900 staff, and has offices in Barcelona, Beijing, Budapest, Edinburgh, Glasgow, London, Miami, Shenzhen, Singapore and Sofia.
Complainant owns, inter alia, the following trademark registrations:
SKYSCANNER, International Trademark Registration No. 900393, Registration Date March 3, 2006, covering, "Advertising services provided via the Internet, opinion polling, data processing, provision of business information, business information services, namely data feeds, auctioneering; all relating to travel", in International Class 35, "Providing telecommunications connections to a global computer network to allow for the navigation of search engines" in International Class 38, and "Travel information and arrangement services provided from an Internet website; providing information via means of a global computer network in relation to travel; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology" in International Class 39;
SKYSCANNER, International Trademark Registration No. 1030086, Registration Date December 1, 2009, covering "Advertising services provided via the Internet, opinion polling, data processing, provision of business information, data feeds, auctioneering, all relating to travel" in International Class 35, "Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology" in Class 39 and "Operating of a search engine relating to travel" in International Class 42.
SKYSCANNER, United Kingdom Trademark Registration No. UK00002313916, Registration Date April 30, 2004, Filing Date October 23, 2002, covering "Advertising services provided via the Internet, opinion polling, data processing, provision of business information, data feeds, auctioneering; all relating to travel" in International Class 35, "Operating of a search engine; all relating to travel"in International Class 38, and "Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilising wireless application protocol technology" in International Class 39.
Complainant also owns trademark registrations for SKYSCANNER in India, United Kingdom, Canada and New Zealand
The disputed domain name was registered on January 21, 2017. Currently, the disputed domain name does not resolve to an active website.
Complainant contends as follows:
The disputed domain name is identical to Complainant's SKYSCANNER marks. 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 top-level domain.
Respondent has no rights or legitimate interests in respect of the disputed domain name. As far as the Complainant is aware, Respondent does not own any registered rights in any trademarks comprising 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. Complainant has not given its consent for Respondent to use its registered trademarks in a domain name registration. To the best of Complainant's knowledge, Respondent is not commonly known as "Skyscanner". However, even if Respondent does refer to itself as "Skyscanner", Complainant submits that Respondent's use of this name constitutes bad faith insofar as Respondent's interest cannot be legitimate nor is there a bona fide use of the disputed domain name.
The disputed domain name is inactive. There is no evidence that Respondent has made demonstrable preparations to use or is using the disputed domain name in connection with a bona fide offering of goods and services.
Given the famous nature of 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 Respondent was aware of Complainant's rights prior to registering the disputed domain name but it is inevitable that visitors to the disputed domain name (once it resolves to an active website) would mistakenly believe there to be association with Complainant.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered on January 21, 2017, while Complainant's registered rights date back to 2002. Complainant submits that Respondent must have been aware of the reputation and international success of Complainant's business under its SKYSCANNER trademark at the time Respondent registered the disputed domain name. It can be no coincidence that Respondent chose to register a domain name identical to Complainant's rights, not only because of the identical nature of the disputed domain name but because Respondent chose to register the new gTLD <.pro>. Complainant is a famous tech business and specializes in corporate travel for professionals. Complainant submits that Respondent's registration of the disputed domain name is designed to target the reputation of Complainant's business under its SKYSCANNER trademark.
Passive holding of a domain name that cannot be used legitimately by anyone other than the trademark holder is registration and use in bad faith, insofar as the domain name is being used as a blocking registration, preventing from using the domain name for legitimate commercial purposes. Moreover, if Respondent does point the domain name to an active website in the future, such use can only be designed to take unfair advantage of the reputation of Complainant's rights. There is a realistic and serious threat posed by 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 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 in good faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the absence of a response from Respondent, Complainant submits that, on the balance of probability, Respondent has registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the SKYSCANNER mark. See section 4 above.
The Panel notes that the disputed domain name incorporates the SKYSCANNER mark in its entirety, adding the top level domain ".pro". The Panel finds that the disputed domain name is identical to Complainant's mark SKYSCANNER.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not own any registered rights in "skyscanner", which is not a descriptive, generic, or dictionary term. Complainant has not given its consent for Respondent to use its registered trademarks in a domain name registration. Respondent is not commonly known as "Skyscanner". Complainant adds that the disputed domain name is inactive. There is no evidence that Respondent has made demonstrable preparations to use or is using the disputed domain name in connection with a bona fide offering of goods and services. Since the SKYSCANNER trademark is famous and no other individual or business owns trademark rights in this mark, it is likely that Respondent was aware of Complainant's rights prior to registering the disputed domain name. Lastly, Complainant says it is inevitable that visitors to the disputed domain name once it resolves to an active website would mistakenly believe there is an association with Complainant.
The evidence on the casefile supports Complainant's contention that the disputed domain name is inactive. A Panel's search on the Wayback Machine at the "www.archive.org" website did not show any archived pages for the disputed domain name.1 In fact, nothing suggests that the disputed domain name has ever been used or that there were any preparations to use it in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), or in a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii). Further, according to the relevant WhoIs data, the registrant of the disputed domain name is "Ebor Kargapolov", and there is no evidence that this person is known, commonly or otherwise, by the disputed domain name. Thus, Policy paragraph 4(c)(ii) is inapplicable. Taking into account these facts and circumstances, the Panel considers that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent failed to contest Complainant's contentions and to provide any explanation or evidence whatsoever as to its rights or legitimate interests. Accordingly, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 ("While the overall burden of proof in UDRP proceedings is on the complainant, 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.")
Complainant has shown that its first registration for the mark SKYSCANNER predates the registration of the disputed domain name by over a decade. See section 4 above. In particular, the Panel notes that International registration No. 1030086 designates the Russian Federation, the country of residence of Respondent, under the Madrid Protocol. In addition, Complainant's mark and services relating to travel search on the Internet enjoy considerable reputation. Thus, it is more likely than not that Respondent knew of and targeted Complainant, its mark and services when it registered the disputed domain name.
As seen above, the disputed domain name appears to have been inactive since it was registered. See section 6 B above. The Panel agrees with Complainant that the doctrine of passive holding of the disputed domain name is applicable to the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and WIPO Overview 3.0, section 3.3. ("Can the "passive holding" or non-use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.")
In the present case, the Panel has considered the following relevant circumstances: First, Complainant operates a well-known service of travel search on the Internet, including services for corporate travel, i.e., a professional public. Second, the disputed domain name incorporates the SKYSCANNER mark in its entirety plus the ".pro" top level domain, indicating that the website is somehow related or dedicated to a professional public. Third, given the reputation of Complainant's mark, it is unlikely that Respondent has considered any use of the disputed domain name other than creating confusion with Complainant's SKYSCANNER mark, for profit. Fourth, Respondent failed to respond to the Complaint, and to provide any explanation whatsoever for its registration of the disputed domain name or its contemplated use, if any.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <skyscanner.pro> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: May 30, 2018
1 See WIPO Overview 3.0, section 4.8 ("May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.")