WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoIsGuard Inc. / Rafat El Shawaf

Case No. D2019-2789

1. The Parties

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

The Respondent is WhoIsGuard Inc., Panama / Rafat El Shawaf, Palestine.

2. The Domain Name and Registrar

The disputed domain name <skyscanner.best> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 18, 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 on November 18, 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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. However, an informal email from the Respondent was received by the Center on November 19, 2019: “hello dear i'm not work against that companey, the domain name is avaliable at the internet if they need the domain name i can sale it for them that's my offer 10,000 $ thanks” Accordingly, the Center the Commencement of Panel Appointment email on December 10, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on December 12, 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

According to Annex 3 to the Complaint, the Complainant is an online travel search site, active globally and specializing in offering a search engine particularly for customers seeking for flight connections. Based on the provided information, the Complainant’s website attracts 100 million visits per month and its app has been downloaded more than 70 million times.

The Complainant owns a large number of trademark registrations for its SKYSCANNER mark, such as United States of America Trademark Registration No. 1133058, registered with the United States Patent and Trademark Office on October 22, 2013, covering protection for inter alia goods and services in classes 35, 39 and 42, including but not limited to the provision of an Internet search engine relating to travel.

The Complainant also owns and operates various domain names, such as <skyscanner.com>.

The disputed domain name was registered on October 6, 2019.

The Respondent is an individual from Palestine.

Until recently, as evidenced in Annex 4 to the Complaint, the disputed domain name was linked to an online flight search engine in Arabic language. At the time of the decision, however, the disputed domain name resolves to a website indicating that the disputed domain name is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is identical to its SKYSCANNER trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is an official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s SKYSCANNER trademark, when registering and taking control over the disputed domain name.

B. Respondent

Except from his informal email communication as indicated above, 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.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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

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

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the views stated therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark SKYSCANNER by virtue of various trademark registrations worldwide.

The disputed domain name is in view of the Panel identical to the Complainant’s SKYSCANNER trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

In the Panel’s view, the mere addition of the generic Top-Level Domain (“gTLD”) “.best” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark SKYSCANNER, especially as the disputed domain name is identical to the Complainant’s trademark and, hence, carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a substantive Response to the Complainant’s contentions, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel notes the reputation and internationally wide recognition of the Complainant’s SKYSCANNER trademark. The Panel is accordingly convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name.

In the Panel’s view, it even appears that the Respondent has registered and used the disputed domain name for the purpose of creating an association with the Complainant. By registering and using the disputed domain name, which is identical to the SKYSCANNER trademark of the Complainant, the Respondent apparently targets the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. Noting that the Respondent lacks any rights or legitimate interests in the disputed domain name, the use of the disputed domain name incorporating the identical trademark and redirecting Internet users to another travel search engine for commercial gain, is sufficient evidence of bad faith under paragraph 4(b)(iv) of the Policy. See in this regard WIPO Overview 3.0, section 3.1.4. The Panel finds this a valid indication for bad faith registration and use under paragraph 4(b)(iii) of the Policy.

Additionally, offering the disputed domain name for sale is in view of the Panel a further indication for the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s trademarks.

Finally, the Panel finds that the Respondent’s failure to respond substantively to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.

All in all, the Panel concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 <skyscanner.best> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: December 26, 2019