The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is MR Zia Mody, Neozoon, Luxembourg.
The disputed domain name <sky-scanner.com> is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2020, 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 February 28, 2020 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 amended Complaint on March 2, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on March 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 7, 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.
The Complainant is a United Kingdom enterprise that sells online travel agency services. The Complaint is based amongst others on the following word trademarks, applied for on or before the date of registration of the disputed domain name and consisting of the term SKYSCANNER, e.g. International Trademark No. 900393 (covering amongst other the European Union, registered on March 3, 2006 for services in classes 35, 38, and 39) and International Trademark No. 1030086 (covering amongst other the European Union, registered on December 1, 2009 for services in classes 35, 39, and 42).
According to the Registrar’s verification response, the Respondent registered the disputed domain name on December 16, 2013. The language of the registration agreement at the time of registration was English.
It results from the undisputed evidence provided by the Complainant that the disputed domain name redirected to several websites on rotation, including to the Complainant’s website. The disputed domain name currently resolves to a website displaying Pay-Per-Click (“PPC”) links.
Finally, the Disputed Domain Name is listed for sale. Before starting the present UDRP proceedings, the Complainant contacted Afternic through its standard online enquiry form. In the following correspondence with the Complainant’s representative, Afternic confirmed amongst others that the Respondent “would consider an offer in the mid 4-figures USD or higher”.
Firstly, the Complainant points out that the disputed domain name is aurally, visually and conceptually identical to the registered mark in which the Complainant has rights. The Disputed Domain Name contains the SKYSCANNER Trademark in its entirety, the only minor distinction being that it includes a hyphen in the Domain Name.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent does not own any registered rights in any trademarks which comprise part or the entirety of the disputed domain name. Furthermore, the Complainant has not authorized the Respondent to use the SKYSCANNER marks as part of the disputed domain name. Finally, the Respondent is not commonly known as “sky-scanner”.
Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith under several aspects. The disputed domain name is offered for sale at a mid 4-figures USD or higher. Furthermore, the Respondent has engaged in a bad faith pattern of targeting domain names related to other third-party trademarks as confirmed by a reverse WHOIS search. Finally, the disputed domain name has been used to redirect Internet users to various revolving content, including the Complainant’s own website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the owner of several trademark registrations consisting of the verbal element SKYSCANNER, in particular International Trademark No. 900393 (covering amongst other the European Union, registered on March 3, 2006 for services in classes 35, 38, and 39) and International Trademark No. 1030086 (covering amongst other the European Union, registered on December 1, 2009 for services in classes 35, 39, and 42).
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark for purposes of the first element, where it consists of a common, obvious, or intentional misspelling of a trademark (cf. section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). This Panel shares the same view and notes that the Complainant’s registered trademark SKYSCANNER is fully included in the disputed domain name. Merely the elements SKY and SCANNER have been divided by a hyphen. Therefore, the Panel concludes that the mark SKYSCANNER is at least phonetically identically included in the disputed domain name and obviously recognizable within said domain name (cf. T. Rowe Price Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1955).
In the light of the above, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s uncontested evidence that the disputed domain name redirects to several websites on rotation, including to the Complainant’s website. Such use cannot – in this Panel’s view – be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark and are therefore likely to mislead Internet users (cf. WIPO Overview 3.0 at section 2.9 and 2.5.3). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the SKYSCANNER trademarks for registering the disputed domain name which are confusingly similar.
Furthermore, the Panel notes that there is no evidence in the record showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a noncommercial 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 pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademark SKYSCANNER is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this mark. In fact, the disputed domain name is used, amongst others, for a parking page with commercial links. Such use is commercial, so that a noncommercial use is excluded from the outset.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to third persons for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. It results from the Complainant’s undisputed and documented allegations the Respondent “would consider an offer in the mid 4-figures USD or higher”. This Panel finds that such request is clearly in excess of any out-of-pocket costs directly related to the disputed domain name (see Linatex Limited v. Yunkook Jung, WIPO Case No. D2019-1784; T. Rowe Price Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1955).
In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;
(ii) the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the creation of a domain name with exactly contains the trademark SKYSCANNER, merely adding a hyphen to separate the elements SKY and SCANNER indicates an intention on the part of the Respondent to confuse users;
(iv) the Respondent hiding its identity behind a privacy shield;
(v) the Respondent having been registered previously many domain names comprising well-known international trademarks; and
(vi) the disputed domain name resolving to rotating internet pages, including the Complainant’s website.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used 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 <sky-scanner.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: April 22, 2020