WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Man Domian
Case No. D2016-2389
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Keltie LLP, United Kingdom.
The Respondent is Man Domian of Washington, Virginia, United States of America (the “US”).
2. The Domain Name and Registrar
The disputed domain name <skyscannershopping.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2016. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2016, 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 the Respondent of the Complaint, and the proceedings commenced on December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed Eduardo Magalhães Machado as the sole panelist in this matter on January 16, 2017. 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
The Complainant is Skyscanner Limited, a company incorporated in the United Kingdom. The Complainant owns numerous trademark registrations worldwide for SKYSCANNER and variations, including in the US (US trademark number 3,242,752, registered on May 15, 2007). The Complainant is the creator of a travel search and price comparison website hosted at a range of domains under various Top-Level Domains, including <skyscanner.us>, which redirects automatically to its central website “www.skyscanner.net”.
The Respondent did not file a Response, and, therefore, very little information is known about the Respondent.
The disputed domain name was registered on June 23, 2016. According to the evidence provided by the Complainant the disputed domain name has been used to resolve to a website providing advertising services of third-party goods.
5. Parties’ Contentions
The Complainant owns numerous trademark registrations for SKYSCANNER, including in classes 35, 39 and 42. There are previous UDRP decisions which recognize the Complainant’s rights in the SKYSCANNER mark.
The disputed domain name incorporates the SKYSCANNER trademark in its entirety. The additional “shopping” element is generic and descriptive of the action undertaken by visitors to the website, in the same manner as visitors to the Complainant’s websites.
The Respondent’s website provides advertising services of third-party goods, which is protected – without commercial limitation – by the Complainant’s United States trademark registrations.
The Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
- The Respondent does not own any rights in trademarks comprising all or part of the disputed domain name.
- The term “Skyscanner” is not descriptive in any way, nor does it have any generic meaning.
- The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration.
- To the best of the Complainant’s knowledge, the Respondent is not commonly known as “Skyscanner”.
- the Respondent’s use of the disputed domain name is for commercial gain and misleadingly diverts the Complainant’s consumers.
The Complainant’s registered trademark rights pre-date the registration of the disputed domain name. As such, the Respondent must have been aware of the Complainant’s reputation and trademark rights in SKYSCANNER at the time it registered the disputed domain name.
The Respondent’s use of a fictitious address, email address and contact phone number contravenes its registration agreement with ICANN; a registrant has a fundamental obligation to provide clear and accurate contact details at all times.
The Respondent’s failure to reply to the Complainant’s pre-complaint communications lends itself as evidence of bad faith.
The Complainant has established that the Respondent uses the disputed domain name to attract consumers for commercial gain, in respect of services protected by the Complainant’s US trademark registration No. 3242752. The Respondent’s use of the disputed domain name results in the creation of a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.
At the end, the Complainant asserts that Respondent is the owner of a larger number of domain names several of which are confusingly similar to third-party registered trademarks and are, on the balance of probability, used and registered in bad faith, and that the Respondent is engaged in a pattern of bad faith conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns numerous trademark registrations for SKYSCANNER. The Panel notes that there are prior UDRP decisions which recognize the Complainant’s rights in the SKYSCANNER trademark.
The Panel finds that the disputed domain name incorporates the Complainant’s trademark in its entirety. The additional element “shopping” is in fact a descriptive element.
In light of the above, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case.
The Panel notes that there is no evidence that the Complainant has authorized, licensed or permitted the Respondent to register or use the disputed domain name or the SKYSCANNER trademark.
The Panel also notes that there is no evidence that the Respondent is commonly known by the disputed domain name.
Hence, considering the Complainant’s reputation in connection with the SKYSCANNER trademark, the Panel is of the view that the Respondent is using the disputed domain name to create confusion among Internet users in order to divert traffic to its website.
Likewise, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent, who is in default, has not provided any arguments or evidence to rebut the Complainant’s prima facie case.
In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In fact, the objective of the Policy is to limit the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In the circumstances of the present case the Panel notes that the Respondent must have been aware of the Complainant’s SKYSCANNER trademark and reputation at the time the Respondent registered the disputed domain name, at which stage the Complainant already enjoyed international success.
The Panel notes that the Respondent’s website at the disputed domain name provides advertising services of third party goods.
In this regard, the Panel finds that the Respondent appears to be attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark within the meaning of paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel agrees with the Complainant that whilst the Respondent has been not named as a respondent in any other UDRP cases in the past, it is the owner of at least some domain names which are confusingly similar to third-party registered trademarks.
Likewise, the Panel agrees that Respondent’s failure to reply to Complainant’s cease-and-desist letter and to this Complaint are also additional evidence of bad faith.
Thus, the Panel finds that the Complainant has succeeded on the third element 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 <skyscannershopping.com> be transferred to the Complainant.
Date: January 30, 2017