WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. WhoisGuard, Inc / Timothy Schoenheimer
Case No. D2018-2853
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is WhoisGuard, Inc of Panama, Panama / Timothy Schoenheimer of Adare, Australia.
2. The Domain Name and Registrar
The disputed domain name <skyscanner.store> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2018, 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 the same date 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 December 19, 2018.
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 4, 2019. On January 16, 2019 the Complainant requested to suspend the proceedings. On January 16, 2019 the Center suspended the proceedings from January 16, 2019 to February 14, 2019. On February 15, 2019 the Center reinstituted the proceedings upon the Complainant’s request. In accordance with the Rules, paragraph 5, the new due date for Response was February 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on March 8, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 8, 2019. 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 is the creator of a travel search and price comparison website hosted at a range of domains in various jurisdictions, including <skyscanner.net>.
The Complainant owns numerous trade mark registrations worldwide for SKYSCANNER and variations thereof, including International Trade Mark Registration No. 1030086 for SKYSCANNER, registered December 1, 2009 in which the country of residence of the Respondent, Australia is designated. The mark is registered for various services in classes 35, 39 and 42 of the Nice classification.
The disputed domain name was registered by the Respondent on November 26, 2018 and resolves to an active website, which displays a travel aggregator tool and contains a logo that is almost identical to the Complainant’s SKYSCANNER trademark.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to the Complainant’s SKYSCANNER trademark since it consists of the Complainant’s trademark in its entirety.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its trademarks neither in the disputed domain name nor on the corresponding website. The Respondent’s action is therefore not a bona fide offering of goods or services under the Policy. Also, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and is used in bad faith. The Complainant registered and has used its mark extensively prior to the Respondent’s registration of the disputed domain name. Further, the Respondent intentionally attempts to attract Internet searchers to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. This is underlined by the fact that the Respondent uses a logo that is almost identical to the Complainant’s SKYSCANNER trademark and that the Respondent has copied other graphic elements from the Complainant’s own website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical (in the sense of the Policy) to the Complainant’s trademark SKYSCANNER because it contains the trademark in its entirety. In addition, it has also long been held by UDRP panels that the generic Top-Level Domain (“gTLD”) suffix does not preclude a finding of identity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered or acquired the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name has been and is still being used for a website that purports to offer the same services as the Complainant and on which the Respondent uses the Complainant’s trademark including the Complainant’s SKYSCANNER trademark just as the Respondent has copied other graphic elements from the Complainant’s website. This clearly gives Internet users the impression that the website is the official website of the Complainant or a website that is authorized by the Complainant, which is not the case.
The Panel therefore finds that the Respondent by its registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website most likely for commercial gain. Moreover, the Panel finds that this use of the disputed domain name disrupts the Complainant’s business.
Noting that the disputed domain name incorporates a registered and used trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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.store> be transferred to the Complainant.
Date: April 2, 2019