WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Dharambir Singh
Case No. D2017-2402
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Keltie LLP, United Kingdom.
The Respondent is Dharambir Singh of Karnal, Haryana, India.
2. The Domain Name and Registrar
The Disputed Domain Name <skyscannerhotels.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 December 5, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 2017, 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. In response to a request of amendment by the Center, the Complainant filed an amended Complaint on December 12, 2017.
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 December 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. On December 21, 2017, the Respondent sent two email communications to the Center regarding the dispute. On the same day, the Center sent an email regarding a possible settlement to the Parties. The Complainant did not request suspension by the specified due date. The Respondent did not submit a substantive response by the specified due date. On January 11, 2018, the Center sent the Notification of Commencement of Panel Appointment Process to the Parties.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 26, 2018. 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 a United Kingdom corporation which operates a travel search and companion websites hosted at a range of domain names in many jurisdictions using the name "Skyscanner". Its rights date back to 2002.
The Complainant owns numerous trademark registrations worldwide for SKYSCANNER and variations thereof, including:
- International Trademark Registration No. 1030086 for SKYSCANNER, registered December 1, 2009; and
- Indian Trademark Registration No. 1890840 for SKYSCANNER, registered December 2, 2009.
- International Trademark Registration No. 900393 registered March 3, 2006.
The Respondent registered the Disputed Domain Name on November 21, 2017.
The Respondent's website, accessed by the Domain Disputed Domain name, redirects to <amomahotels.com>, a website which advertises holiday packages and hotels which are services offered by the Complainant.
The Respondent has had no authorization of any kind from the Complainant which would permit the Complainant's trademark to be reflected in the Disputed Domain Name.
The Disputed Domain Name is shown for sale on a domain marketplace for USD 1,000 which sum is in excess of the Respondent's out-of-pocket costs.
A reverse WhoIs report shows that the Respondent has registered several domains which incorporate well-known trademarks such as <expediahotels.co.in>. The Respondent claims at the foot of its homepage to have partnerships with several hotel businesses.
5. Parties' Contentions
The Complainant owns numerous trademark registrations for SKYSCANNER and variations thereof, including in India. There are previous UDRP decisions which recognize the Complainant's rights in the SKYSCANNER trademark: for example, Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481.
The Disputed Domain Name incorporates the SKYSCANNER trademark in its entirety. The additional wording (the word "hotels") is generic and descriptive of the industry in which the parties operate. It does not distinguish the Dispute Domain Name from the SKYSCANNER trademark.
The Respondent has no rights or legitimate interests in the Disputed Domain Name. None of the situations set out in paragraph 4(c) of the Policy applies to the Respondent.
The Complainant's trademark rights pre-date the registration of the Disputed Domain Name. The Respondent must have been aware of the Complainant's reputation (including in India) and trademark rights in SKYSCANNER at the time it registered the Disputed Domain Name.
The Respondent uses the Disputed Domain Name to attract the Complainant's customers to the Respondent's website for commercial gain. The use of the Disputed Domain Name creates a likelihood of confusion with the SKYSCANNER trademark as to the source, sponsorship affiliation or endorsement of the Respondent's websites. The Respondent is intentionally trading off the goodwill associated with the Complainant's SKYSCANNER trademark. This cannot constitute a bona fide offering of goods or services.
The Respondent registered the Disputed Domain Name to sell it at a price in excess of the Respondent's out-of-pocket expenses.
The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
To be successful, the Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present (paragraph 4(a) of the Policy).
A. Identical and Confusingly Similar
The Complainant's rights in the SKYSCANNER trademark have been recognized by previous UDRP panels, see, e.g., Skyscanner Limited v Ali Karatas, Fast Line (UK) Ltd, WIPO Case No. D2016-0176 and Skyscanner Limited v Basit Ali, WIPO Case No. D2012-1983). The SKYSCANNER trademark is widely known in the travel and tourism industry.
SKYSCANNER remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as "hotels") to a trademark does not prevent confusingly similarity (see, e.g., section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The addition of the descriptive term "hotels" does nothing to prevent the confusing similarity of the Disputed Domain Name with the SKYSCANNER trademark. The fact that the descriptive term refers to the industry with which the Complainant is concerned exacerbates the confusing similarity.
Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademarks in a domain name.
Paragraph 4(c) of the Policy could have applied to the registration of the Disputed Domain Name, e.g., had one of its three provisions applied in this case. However, the Respondent has chosen not to invoke paragraph 4(c), and the Complainant has met its burden. The Complainant's claim that it gave the Respondent no authority is not challenged by the Respondent.
The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Name. Therefore, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The inference that the Respondent must have known of the Complainant and the fame of its travel service business at the time of registration of the Disputed Domain Name in November 2017 is inescapable. The fact that the Disputed Domain Name redirects to a website with links to competitors of the Complainant shows that inference to be obvious – not only at the time of registration – but thereafter.
The likelihood of confusion is clear.
The fact that the Respondent has put the Disputed Domain Name up for sale for USD 1,000 and the Respondent's purported affiliation with competitors of the Complainant is further proof of bad faith.
Paragraph 4(a)(iii) of the Policy is satisfied.
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 <skyscannerhotels.com> be transferred to the Complainant.
Sir Ian Barker QC
Date: February 6, 2018