WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Bisy Philip, Tourism Point LLC
Case No. D2019-2841
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Bisy Philip, Tourism Point LLC, India.
2. The Domain Name and Registrar
The disputed domain name <skyscannerdubai.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 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2019, 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 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 10, 2020. 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 of the United Kingdom, which operates a leading global travel search site <skyscanner.net>.
The Complainant holds several trade mark registrations including:
- the international trade mark registration for SKYSCANNER No. 900393, registered on March 3, 2006 in classes 35,38, and 39;
- the international trade mark registration for SKYSCANNER No. 1030086, registered on December 1, 2009 in classes 35, 39, and 42.
The disputed domain name was registered on December 18, 2016 and updated on December 19, 2019. The disputed domain name resolves to an inactive page.
5. Parties’ Contentions
Firstly, the Complainant asserts that the disputed domain name is confusingly similar to the SKYSCANNER mark which has no generic, dictionary meaning.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant claims that it has not agreed to the Respondent’s registration of the disputed domain name. The Complainant also emphasizes that the Respondent is not commonlyknown as “Skyscanner Dubai”.
Thirdly, the Complainant states that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent was or should have been aware of the popularity of the SKYSCANNER mark as its registration predate the registration of the disputed domain name. According to the Complainant, the disputed domain name was linked to a website which remains inactive which constitutes a passive holding. Furthermore, the Complainant asserts that the Respondent is engaged in domain name squatting, namely, intentionally purchasing generic top-level domains (“gTLD”) containing third party trade marks to block those trade mark owners from registering them, to profit from reselling them, or to use them to generate revenue through PPC links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SKYSCANNER mark and is confusingly similar with it. The addition of the word “dubai” is not enough to distinguish the disputed domain name from the Complainant’s mark. Quite the opposite, since the Complainant does business in the tourism industry, addition of a name of the city which is a popular touristic destination in the disputed domain name may increase the confusion of Internet users.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trade mark or service mark, the generic gTLD suffix “.com” may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the SKYSCANNER mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is nor authorized by the Complainant to use the SKYSCANNER mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the passive holding of the disputed domain name cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
The disputed domain name was registered over 10 years after the Complainant registered the SKYSCANNER mark. This together with the reputation of the SKYCANNER mark in the field of on-line tourism services indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). Moreover, the Complainant submitted the result of the reverse Whois search against the Respondent’s email address which brought up 45 other domain names linked to their account on GoDaddy.com, including other travel retailers such as “Oman Air” and “flyiin”, in addition to a series of domains containing the term “FIFA”’ (Annex No 5). This evidence that the Respondent is engaged in domain name squatting, which is another indication of bad faith registration.
Secondly, the disputed domain name currently resolves to an inactive webpage, but the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232).
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the Policy, and that the third element of paragraph 4(a) 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 <skyscannerdubai.com> be transferred to the Complainant.
Date: January 22, 2020