The Complainant is Skyscanner Limited, c/o Pinsent Masons LLP, London, United Kingdom of Great Britain and Northern Ireland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ali Karatas, Fast Line (UK) Ltd, London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <skyscannerminicab.com> (“the Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2016, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 4, 2016.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2016.
The Center appointed Isabel Davies as the sole panelist in this matter on March 8, 2016. 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.
The Complainant which provides travel arrangement services is the proprietor of International Trade Mark Registration No 1030086 for SKYSCANNER dating back to 2009 and other registrations internationally.
The Disputed Domain Name was registered on April 2, 2014.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant states that it is the proprietor of International Trade Mark Registration No. 1030086 for SKYSCANNER, designating registered trade mark protection in inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, European Community, Japan, Norway, Russian Federation, Singapore, Turkey and the Ukraine, registered on 1 December 2009 for services in Classes 35, 39 and 42 together with registrations in other countries around the world.
Further, it states that it is the owner of the Domain Name <skyscanner.net>, which was registered on July 3, 2002 and has been used since that date in connection with travel arrangement services and the provision of related information, including but not limited to the arrangement of airport transfers, flights, hotels and car rental services.
Also, the Complainant states, it has previously satisfied a previous UDRP panel that the above evidence establishes that the Complainant enjoys exclusive rights in the SKYSCANNER trade mark in connection with inter alia “travel information and arrangement services provided from an Internet website providing information via means of a global computer network” as decided in Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983, in which in which the panel held as follows: “The Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its “Skyscanner” websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation among potential customers. It is well-established in prior decisions under the UDRP that the mere addition of either descriptive or geographical elements to a trade mark is insufficient to avoid a finding of confusing similarity between a domain name and the trademark in question”.
The Complainant contends that the Disputed Domain Name is virtually identical to the Complainant’s registered trade marks insofar as the trade mark SKYSCANNER is taken in its entirety and that the term “minicab” is an entirely descriptive term in the travel industries – namely, being a mode of transport - such that it merely indicates the Respondent’s area of specialism within an industry in which the Complainant has operated for several years. The Complainant contends that, in line with the UDRP panel’s decision referenced above, the addition of the term“minicab” to the Complainant’s trade mark is insufficient to avoid a finding of confusing similarity between a domain name and the trade mark in question.
Given the above, the Complainant submits that the Disputed Domain Name is identical or similar to a trade mark in which the Complainant has rights, pursuant to paragraph 4(a)(i) of the Policy.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(viii)(2))
The Complainant states that the Respondent does not own any trade mark applications or registrations for SKYSCANNER or SKYSCANNERMINICAB. Further, the Complainant has found no evidence to suggest that the Respondent is commonly-known as “Skyscanner”. The Complainant submits that, if it were the case that the Respondent was known as Skyscanner, it would display some form of sign indicating the name by which it is commonly known on the front of its dispatch office at the company’s registered address.
The Complainant states that it has not found any evidence of the Respondent’s ownership of any domain names that contain the term “skyscanner”, over and above the Disputed Domain Name and <skyscannerminicab.co.uk>; in this regard, the Complainant reserves the right to file a Nominet dispute against <skyscannerminicab.co.uk> in due course.
The Complainant submits that the term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning and that it has not given its consent for the Respondent to use its registered trade marks in a domain name registration.
The Complainant states that paragraph 4(c)(iii) of the Policy makes it clear that a legitimate interest may be established by showing “fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”.
The Complainant states that, to establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
The Complainant states that the Disputed Domain Name currently points to a website that is used in connection with identical services to those in which the Complainant has a significant reputation, namely, “travel arrangement services” and, more specifically, “arrangement of minicab and airport transfer services”.
The Complainant submits that, given the widespread reputation of the SKYSCANNER trade mark, the public is likely to be confused into thinking that the Disputed Domain Name has a connection with Complainant and that there is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the Disputed Domain Name is pointed.
The Complainant submits that, as a result, potential partners and Internet users are led to believe that the Disputed Domain Name is either the Complainant’s site or the site of official authorised partners of Complainant, which it is not.
Therefore, the Complainant submits that the Respondent’s use – for commercial gain - of a variant of the Complainant’s SKYSCANNER trade mark in connection with services for which it enjoys the exclusive right to use, cannot constitute “fair use” as defined in paragraph 4(c)(iii) of the Policy.
The Complainant submits that it has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy and that therefore, the burden shifts to the Respondent to produce evidence to rebut this presumption
The Disputed Domain Name was registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant states that since 2003 when its original website was launched, its business under its SKYSCANNER trade mark has seen vast growth year-on-year to the extent that it is now the leading travel search engine in Europe and has extended its operations worldwide, opening offices in Singapore, China (Beijing and Shenzhen), Miami and Barcelona. In 2013, tech venture capitalist Sequoia Capital bought into the Complainant’s business after valuing it at $800 million.
Further, the Complainant states, it arranges airport transfers and minicabs to all London airports, including London Heathrow, London Gatwick, London Stansted, London Luton, London City and London Southend and that, through the website to which the Disputed Domain Name is pointed, the Respondent also offers airport transfers and minicab services to the same airports.
Given the above, the Complainant submits that, on the balance of probability, it is highly likely that the Respondent was aware of the Complainant’s business – or at the very least its vast portfolio of <skyscanner> Domain Names whose registration dates predate April 2, 2014 – before the Respondent registered The Disputed Domain Name. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The Complainant refers the Panel to correspondence which it annexed to the Complaint, consisting of the original cease and desist letter that the Complainant sent to the Respondent’s Director, Mr A. Karatas, on October 8, 2015, together with subsequent correspondence that ended on November 24, 2015, once the Respondent had ignored further attempts to resolve the matter amicably. For the purposes of this Complaint the Complainant has referred to Mr. Karatas and his company as one and the same (the “Respondent”).
The Complainant refers to the Respondent’s email dated November 4, 2015, in which he agrees to stop hosting the website to which the Disputed Domain Name points and requests that the parties discuss the matter further by telephone. Throughout the communication, the Respondent does not deny the allegations levelled by the Complainant and after the Respondent’s cooperative email of November 12, 2015, cooperation ceased and the Respondent chose to ignore all future communication.
The Complainant refers to Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632, in which the panel held that the respondent’s failure to reply to the complainant’s communications lends itself as evidence of bad faith. In this case, the Complainant submits that the Respondent’s conduct following registration of the Disputed Domain Name constitutes bad faith, given that it loosely reflects the circumstances in Ebay, Inc. v. Ebay4sex.com, supra. The Complainant submits that the Respondent’s conduct represents a more flagrant example of bad faith, given that it initially agreed to cooperate fully then chose to ignore all subsequent attempts to settle the matter amicably.
In light of the above, the Complainant submits that the Disputed Domain Name was registered and is being used by the Respondent in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.
The Panel accepts that the Complainant is the proprietor of International Trade Mark Registration No. 1030086 for SKYSCANNER, designating registered trade mark protection in inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, European Community, Japan, Norway, Russian Federation, Singapore, Turkey and the Ukraine, registered on December 1, 2009 for services in Classes 35, 39 and 42 together with registrations in other countries around the world.
The Panel also accepts that it is the owner of the Domain Name <skyscanner.net>, which was registered on July 3, 2002 and has been used since that date in connection with travel arrangement services and the provision of related information, including but not limited to the arrangement of airport transfers, flights, hotels and car rental services.
The Panel notes that the Complainant has previously satisfied a prior UDRP panel that the above evidence established that the Complainant enjoys exclusive rights in the SKYSCANNER trade mark in connection with “travel information and arrangement services provided from an Internet website providing information via means of a global computer network” referred to above (Skyscanner Limited v. Basit Ali, supra).
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered trade marks as the trade mark SKYSCANNER is taken in its entirety and that the term “minicab” is a descriptive term in the travel industry and is insufficient to avoid a finding of confusing similarity.
The Panel finds that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights, pursuant to paragraph 4(a)(i) of the Policy.
The Panel accepts that the Respondent does not own any trade mark applications or registrations for SKYSCANNER or SKYSCANNERMINICAB and that the Respondent is not commonly known as SKYSCANNER. It also accepts that the Respondent does not own any domain names that contain the term “skyscanner” apart from the Disputed Domain Name and <skyscannerminicab.co.uk> to which the Complainant reserves the right to file a Nominet dispute.
The Panel accepts that the Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration.
The Panel accepts that the Disputed Domain Name currently points to a website that has minicab and London airport references and that the public is likely to be confused into thinking that the Disputed Domain Name has a connection with the Complainant and that there is a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the Disputed Domain Name is pointed. The Panel accepts that the Respondent’s use cannot constitute “fair use” as defined in paragraph 4(c)(iii) of the Policy.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy and that therefore, the burden shifts to the Respondent to produce evidence to rebut this presumption. The Respondent has not done so.
In light of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
The Panel accepts that the Complainant is a leading travel search engine in Europe and has extended its operations worldwide and that it arranges airport transfers and minicabs to all London airports and that the Respondent also offers airport transfers and minicab services to the same airports.
The Panel considers that it is inconceivable that the Respondent was not aware of the Complainant’s business or its portfolio of <skyscanner> domain names whose registration dates predate April 2, 2014 when the Disputed Domain Name was registered. The Panel notes the page of the Respondent’s website annexed by the Complainant which refers to SKYSCANNER MINICAB, listing all London airports. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
The Complainant refers to Ebay, Inc. v. Ebay4sex.com, supra and Tony Caranci, supra in which the panel held that the respondent’s failure to reply to the complainant’s communications lends itself as evidence of bad faith. In this case, the Complainant submits that the Respondent’s conduct following registration of the Disputed Domain Name constitutes bad faith, given that it loosely reflects the circumstances in Ebay, Inc. v. Ebay4sex.com, supra.
The Respondent stated in an email dated November 4, 2015; “As soon as I will come to UK I will stop Skyscannerminicab.com from hosting”. The Panel accepts that the Respondent’s conduct in relation to the correspondence between the parties, which the Complainant has annexed, represents bad faith.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.
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 <skyscannerminicab.com> be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: March 14, 2016