The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Petrov Petya, United States of America (“US”).
The disputed domain name <skyscanner.kim> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 April 15, 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 amendment to the Complaint on April 20, 2020.
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 April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 27, 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 company incorporated in the United Kingdom, which provides flight search and price comparison online services under the trademark SKYSCANNER. Currently, the Complainant’s main website attacks 100 million visits per month, ranked as 1,671st globally for Internet traffic, and its smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies.
The Complainant owns numerous trademark registrations worldwide for SKYSCANNER and variations thereof, including International Registrations Nos. 900393 (registered on March 3, 2006 in classes 35, 38, and 39, designating the European Union and US); and 1030086 (registered on December 1, 2009 in classes 35, 39, and 42, designating among other jurisdictions the Russian Federation); (collectively the “SKYSCANNER Mark”). The Complainant further owns several domain names that incorporate the SKYSCANNER Mark, including <skyscanner.net>, registered on July 3, 2002.
The disputed domain name was registered on March 17, 2020 and is inactive, resolving to a page with an Internet browser error message.
Key contentions of the Complaint may be summarized as follows:
The Complainant enjoys global reputation in the SKYSCANNER Mark, as the disputed domain name is identical to this mark there exists a high risk of affiliation. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible to ignore the generic Top-Level Domain (“gTLD”).
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known as “skyscanner” and does not own any registered trademark rights comprising this term, which is not a descriptive, generic or included in a dictionary word. There is no reason or authority for any third party to use this term as a trademark in the course of business. Further, the Complainant has not given its consent for the Respondent to use its registered trademark in any manner, and the disputed domain name does not resolve to any active website, and no evidence exists of demonstrable preparations to use the disputed domain name for legitimate purposes or in connection with any bona fide offering of goods and/or services.
The disputed domain name was registered and is being use in bad faith. It can be no coincidence that the Respondent chose to register a domain name that replicates the Complainant’s mark. Given the famous nature of the Complainant’s SKYSCANNER Mark, it is highly likely that the Respondent registered the disputed domain name in knowledge of the Complainant’s rights. The SKYSCANNER Mark enjoyed a great deal of exposure in the international media in November 2016, after the Complainant was acquired by Ctrip (China’s largest online travel agency), in a deal worth approximately GBP 1.4 billion. Further, the disputed domain name is inactive, blocking its registration and preventing the Complainant from using the disputed domain name for legitimate commercial purposes. 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 and there is no response and no explanation as to why the use could be in good faith. The Respondent registered the disputed domain name to make money from it, either intending to sell it to the Complainant, a competitor, or a critic, or to set up a flight fare aggregator, retaining a domain name that the Respondent cannot use lawfully, which of itself amounts to registration and use in bad faith.
The Complainant has cited several previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name is normally considered identical or confusingly similar to that mark for purposes of the Policy. Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant indisputably has rights in the registered trademark SKYSCANNER, incorporated in the disputed domain name in its entirety, and the gTLD “.kim” is a mere technical requirement. Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing paragraph 4(c) of the Policy the circumstances, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
A core factor in assessing fair use of a domain name is whether the domain name falsely suggests affiliation with the Complainant’s trademark. See section 2.5 of the WIPO Overview 3.0.
The disputed domain name incorporates the Complainant’s trademark SKYSCANNER in its entirety, which in itself implies a high risk of confusion or affiliation. Further, the Complainant’s mark is globally used and known, including in the US, where the Complainant operates a website specific for the US market hosted at <skyscanner.com> (registered on July 3, 2002), and where the Respondent is located according to the Registrar verification, albeit the WhoIs record for the disputed domain name may not be accurate. The WhoIs record indicates a street in Russian language in the city of Moscow, located in the state of New York, US. In any case, the Complainant operates more than twenty international websites for different jurisdictions, including a website in Russian language for the Russian Federation market hosted at <skyscanner.ru> (registered on December 4, 2012). The Panel, under the general powers articulated inter alia in paragraphs 10 and 12 of the Policy, has consulted the Complainant’s website and performed some independent research.
Therefore, the Panel considers that there is a high risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant, its partners or affiliates; any website linked to the disputed domain name would be seen as one of the Complainant’s international websites.
It is further remarkable that the disputed domain name is inactive and the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other that may be considered as a fair use or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all the cumulative facts and circumstances indicate that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and so the Panel is prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0.
All cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates identically the Complainant’s trademark SKYSCANNER; (ii) the SKYSCANNER mark is globally used and well-known including in the US, where the Respondent is allegedly located according to the Registrar verification, as well as in the Russian Federation; (iii) the disputed domain name is inactive resolving to a page with an Internet browser error message (which does not prevent a finding of bad faith under the doctrine of passive holding, see section 3.3 of the WIPO Overview); (iv) the Respondent masked his identity behind a privacy protection service, and probably provided non-accurate contact information in the WhoIs record of the disputed domain name; and (v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
In the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used in bad faith with the intention of obtaining a free ride on the established reputation of the Complainant. The disputed domain name was very likely registered targeting the mark SKYSCANNER with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademarks, blocking its registration and preventing its use by the Complainant for legitimate commercial purposes, and ultimately disrupting the Complainant’s business.
All of the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <skyscanner.kim> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: June 10, 2020