WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / I S, Internet Consulting Services Inc.
Case No. D2018-1953
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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / I S, Internet Consulting Services Inc. of Grand Cayman, Cayman Islands, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <skyscannerusa.com> (the “Domain Name”) 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 August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2018 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 August 31, 2018.
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 September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 3, 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 the owner of the mark SKYSCANNER registered, inter alia, in the United Kingdom since 2004 (e.g., number 0002313916, registered on April 30, 2004) for Internet related travel services.
The Domain Name registered in 2018 has been used to point to a parking page offering pay-per-click links competing with the Complainant’s services. The Domain Name has been offered for sale for USD 799.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark SKYSCANNER registered, inter alia, in the United Kingdom since 2004.
The Domain Name contains the Complainant’s trade mark in its entirety, adding only the generic term “usa” (the largest market in which the Complainant operates) and the generic Top-Level Domain (“gTLD”) “.com” which do not distinguish the Domain Name from the Complainant’s mark.
The Respondent does not own any relevant trade mark rights and SKYSCANNER is not descriptive. The Respondent is not commonly known by “Skyscanner USA”. The Complainant has not authorized the Respondent to use its mark.
The Domain Name registered in 2018 points to a parking page offering pay-per-click links to competitors of the Complainant. This is not a bona fide offering of goods and services.
The Domain Name has been used to divert and confuse Internet users for commercial gain. Use of a trade mark for competing pay-per-click links is bad faith registration and use.
The Domain Name has been offered for sale for sums in excess of out of pocket costs of registration on two commercial domain name selling sites.
The Respondent has been the subject of adverse decisions in three other UDRP cases and is engaged in a pattern of conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s SKYSCANNER mark (registered in the United Kingdom for Internet related travel services from 2004), the geographical term “usa” and the gTLD “.com”.
The addition of a geographical term does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s SKYSCANNER mark. It is noted that the Complainant operates in the USA, “usa” being the term added in this case. The Panel finds that the term “usa” does not negate the confusing similarity between the Domain Name and the Complainant’s mark under Policy paragraph 4(a)(i).
The gTLD “.com” is disregarded under the first element confusing similarity test between the Domain Name and the Complainant’s SKYSCANNER mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Complainant’s mark. The Complainant has not authorized the Respondent to use the Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
Panels have found that a respondent is not using a domain name for a bona fide offering of goods or services if it uses the name to point to pay-per-click links diverting Internet users to a website competing with the complainant under its mark.
It it is clear from the evidence that the Respondent has used the site attached to the Domain Name to point to links to competing services which are not connected with the Complainant. The use for the offering of flight services indicates that the Respondent was aware of the significance of the “Skyscanner” name and the Complainant’s rights at the time of registration. The usage of the Complainant’s SKYSCANNER mark which has a reputation in relation to Internet related travel services in relation to similar services not connected with the Complainant is not fair as the site does not make it clear that there is no commercial connection with the Complainant. As such, it cannot amount to a bona fide offering of services.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
As determined above the Respondent’s use of its site is commercial and it is using the site to make profit from links to competing services not associated with the Complainant in a confusing manner. It seems clear that the use of the Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website. This also appears designed to disrupt the Complainant’s business.
The Domain Name has also been offered for sale for USD 799, a sum in excess of out of pocket costs of registration of the Domain Name on two commercial sites.
Finally the Respondent has been the subject of three adverse rulings under the UDRP where it has been found to have registered and used domain names in bad faith demonstrating a pattern of conduct.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b) and has satisfied the third limb 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 Domain Name <skyscannerusa.com> be transferred to the Complainant.
Date: October 3, 2018