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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Contact Privacy Inc. Customer 1245739139 / Varsha Patel, Sunshine

Case No. D2019-3127

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

The Respondent is Contact Privacy Inc. Customer 1245739139, Canada / Varsha Patel, Sunshine, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <skyscannerltd.sale> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, 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 December 23, 2019, 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 December 30, 2019.

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 January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on February 11, 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.

4. Factual Background

Founded in 2003, the Complainant operates an online travel business that allows Internet users to research and book travel, including flights, hotels and vehicle hire.

For use in connection with its online travel services, the Complainant is the owner of multiple trademark registrations for SKYSCANNER in jurisdictions throughout the world, including the following:

- United Kingdom Trademark Registration No. UK00002313916, SKYSCANNER, registered on April 30, 2004; and

- International Trademark Registration No. 900393, SKYSCANNER, registered on March 3, 2006, designating the European Union and the United States of America (“United States”).

In addition, the Complainant owns several domain names comprising its SKYSCANNER trademark, including <skyscanner.net> from which it operates its primary commercial website, as well as a range of domain names registered under various country code Top-Level Domains, for use in connection with country-specific websites. The Complainant’s services are available in over 30 languages, and the Complainant processes payments in over 70 currencies.

The disputed domain name was registered on October 25, 2019, using a privacy service. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts registered trademark rights in the SKYSCANNER trademark. The Complainant submits that the disputed domain name is confusingly similar to its SKYSCANNER trademark as it takes the Complainant’s trademark in its entirety and adds the term “ltd”, which reflects the Complainant’s legal status.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not given any consent for the Respondent to use its registered trademark in a domain name or in any other manner. The Complainant notes that the disputed domain name does not resolve to an active website. Accordingly, the Complainant asserts that there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for any bona fide offering of goods or services. To the best of the Complainant’s knowledge, the Respondent is not commonly known as “Skyscanner Ltd”. In addition, the Complainant submits that the term “skyscanner” is not descriptive, nor does it have any generic dictionary meaning. Rather, the Complainant asserts that it is highly distinctive in the context of the services that the Complainant offers under its SKYSCANNER trademark. In light of the famous nature of the Complainant’s SKYSCANNER trademark, the Complainant submits that it is inevitable that Internet users would mistakenly believe there to be an association between the disputed domain name and the Complainant.

With regard to bad faith, the Complainant asserts that by the time that the disputed domain name was registered on October 25, 2019, the Complainant enjoyed a global reputation in its SKYSCANNER trademark, following 17 years of international growth. The Complainant submits that it can be no coincidence that the Respondent chose to register a domain name that replicates the Complainant’s distinctive trademark, and that the disputed domain name was therefore registered in bad faith. The Complainant further argues that if the Respondent uses the disputed domain name to point to an active website in the future, there is a realistic and serious threat posed by the Respondent’s continued ownership of the disputed domain name. The Complainant submits that prior UDRP panels have found that there can be a finding of registration and use in bad faith where there is passive holding of a domain name comprising a widely-known trademark, where there is no explanation as to why the use could be in good faith. Accordingly, the Complainant submits that the Respondent has registered and used the disputed domain name in bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To obtain an order for transfer of the disputed domain name, the Complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, specifically that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the SKYSCANNER trademark by virtue of its registration and widespread use, the details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s SKYSCANNER trademark as its leading element, together with the suffix “ltd”, an abbreviation of the term “limited”, under the generic Top-Level Domain (“gTLD”) “.sale”. The Complainant’s trademark is immediately recognizable in the disputed domain name. The Panel is of the view that the addition of “ltd” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The gTLD “.sale” may be disregarded for the purposes of confusing similarity in the present case; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s SKYSCANNER trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted in 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.”

As noted above, the Complainant asserts that the Respondent has not been authorized to make use of its SKYSCANNER trademark in a domain name or otherwise.

The Panel notes that the disputed domain name does not resolve to an active website, and that the disputed domain name does not otherwise appear to be in use. As such, the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, nor can the Respondent be said to be making any legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

The Panel further accepts the Complainant’s assertion that the Respondent is not commonly known by the disputed domain name. The underlying registrant of the disputed domain name is listed as “Varsha Patel, Sunshine”, which bears no resemblance to the disputed domain name. There is no evidence of the Respondent having registered any trademarks corresponding to the disputed domain name.

In light of the above, 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. Despite being duly notified of the Complaint, the Respondent has not come forward with any evidence to rebut the Complainant’s allegations.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In support of its contentions in relation to the Respondent’s bad faith registration of the disputed domain name, the Complainant has produced evidence showing that it is well known internationally. Notably, the Complainant’s website at “www.skyscanner.net” receives some 100 million visitors per month, its mobile application has been downloaded over 70 million times. In 2016, the Complainant was acquired by Chinese travel agency Ctrip in a transaction valued at approximately GBP 1.4 billion, which received press coverage in various international publications. Prior UDRP panels have recognized the well-known character of the Complainant’s trademark. See, e.g., Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983: “[…] in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation among potential customers.”

The Panel notes that the disputed domain name comprises the Complainant’s trademark in its entirety, and is unaltered, save for the addition of the abbreviation “ltd”, which corresponds to the Complainant’s corporate structure as a limited company, as well as its corporate name. In the circumstances, the Panel infers that the Respondent had the Complainant in mind when registering the disputed domain name. In the absence of any evidence of actual or planned bona fide use of the disputed domain name, the Panel finds that the Respondent registered the disputed domain name, without any authorization from the Complainant to make use of its trademark, in bad faith.

As noted above, the disputed domain name does not resolve to an active website, and the Respondent does not appear to be making any other use of the disputed domain name. Prior UDRP panels have consistently held that non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding; see WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the present case, the Complainant has produced evidence to show that its SKYSCANNER trademark enjoys a substantial reputation internationally. The Respondent has not come forward to respond to the allegations of the Complainant, or to provide any evidence of current or contemplated good faith use of the disputed domain name. In the circumstances, the Respondent’s registration of the disputed domain name using a privacy service to hide its identity may be viewed as an additional indicator of the Respondent’s bad faith. Noting the degree of proximity between the disputed domain name and the Complainant’s corporate name, the Panel cannot conceive of any good faith use to which the disputed domain name could be put that would not have the effect of creating a misleading impression of association between the disputed domain name and the Complainant. The Panel finds that the Respondent’s passive holding of the disputed domain name amounts to use in bad faith.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <skyscannerltd.sale> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: February 24, 2020

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