WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Ahmed Alshamy
Case No. D2019-3130
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Ahmed Alshamy, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <worldskyscanner.site> (“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 December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. On January 12, 2020, the Center received an email communication from Respondent in response to which the Center sent a possible settlement on January 14, 2020, to the Parties. Complainant did not comment on the latter email of the Center and Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to the panel appointment stage on January 23, 2020.
The Center appointed John C. McElwaine as the sole panelist in this matter on January 28, 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
Complainant is an online travel services company located in the United Kingdom.
Complainant is the owner of the SKYCANNER trademark and has obtained numerous trademark registrations worldwide, including but not limited to registrations for the trademark in the United Kingdom, European Union, United States of America, Canada, Australia, Switzerland, China, Japan, Norway, Russian Federation, Singapore, Turkey, India, and New Zealand. Complainant’s earliest registered rights in the SKYSCANNER trademark date back to 2002, by virtue of the United Kingdom trademark no. UK00002313916, filed on October 23, 2002 and registered on April 30, 2004. Complainant has been using its SKYSCANNER trademark for at least 17 years prior to the registration of the Domain Name.
Respondent is an individual who resides in Dubai, United Arab Emirates. On November 13, 2019, Respondent registered the Domain Name. As of the filing of the Complaint, the Domain Name did not resolve to an active website.
5. Parties’ Contentions
Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established.
With respect to the first element of the Policy, Complainant asserts rights in the SKYSCANNER trademark dating back at least as early as 2002. Complainant alleges that the Domain Name is comprised of Complainant’s SKYSCANNER trademark preceded by the geographic “world” term and that the addition of the geographic term does not obviate the likelihood of confusion, and thus, the Domain Name is confusingly similar to Complainant’s SKYSCANNER trademark.
With respect to the second element of the Policy, Complainant contends that there is no evidence that Respondent has rights or a legitimate interest in the Domain Name because Complainant is unaware of any trademark rights Respondent has in in the words “worldskyscanner” or “skyscanner”. In addition, Complainant contends that it has not authorized Respondent to use the SKYSCANNER trademark, and to the best of Complainant’s knowledge Respondent is not commonly known as “worldskyscanner”. In addition, Complainant asserts that the SKYSCANNER trademark is distinctive and famous; and Respondent is merely passively holding the Domain Name. Thus, Complainant contends Respondent is not making a bona fide noncommercial use of the Domain Name.
With respect to the third element of the Policy, Complainant alleges that at the time the Domain Name was registered Complainant’s SKYSCANNER trademark enjoyed a global reputation as a result of Complainant’s 17 prior years of use and international expansion of the trademark. Furthermore, Complainant contends that as recently as 2016, still three years prior to registration of the Domain Name, that Complainant’s SKYSCANNER trademark enjoyed a great deal of exposure in the international media as a result of Ctrip’s, China’s largest-online travel agency, acquired Complainant in a deal worth approximately GBP 1.4 billion. As a result of foregoing, Complainant asserts that, on the balance of probabilities, Respondent had actual or constructive knowledge of Complainant’s SKYSCANNER trademark at the time of registration of the Domain Name. Lastly, Complainant further alleges that passive holding of the Domain Name is evidence of registration and use of the Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The Panel acknowledges Respondent’s January 12, 2020, email communication to the Center, but notes that the communication did not specifically address any of Complainant’s contentions and, as such, Respondent did not submit a formal reply to Complainant’s contentions in the subject proceeding. The email stated only, in pertinent part, that Respondent “bought the website just for try with no plan or target to start a business or offer services.”
6. Discussion and Findings
Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2 . Complainant has provided evidence that it is the owner of numerous trademark registrations globally for the SKYSCANNER trademark.
It is well-established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097. Furthermore, the Panel also agrees with the finding of previous UDRP panels that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda, WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437.
The Panel finds that Respondent’s addition of “world” preceding “skyscanner” in the Domain Name does not obviate a finding of a likelihood of confusion with Complainant’s SKYCANNER trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s SKYSCANNER trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Here, Complainant has demonstrated that there is no evidence in the WhoIs data for the Domain Name indicating that Respondent has been commonly known by the term “worldskyscanner”. Instead, the WhoIs data for the Domain Name indicates that the registrant’s name is Ahmed Alshamy. Complainant also has established that Respondent is not authorized to register or use the SKYSCANNER trademark. Respondent failed to submit any arguments on this point. Accordingly, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name.
Respondent may establish a right or legitimate interest in the Domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted above, as it pertains to Complainant’s allegation that Respondent is not authorized by Complainant to use the SKYSCANNER trademark, although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a formal response on this point. The lack of formal response from a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000 0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Notwithstanding the above, given the unique and well-known nature of Complainant’s SKYSCANNER trademark, and based on the uncontested facts of the record, on balance, it is inconceivable that Respondent can establish rights or legitimate interest in a domain name incorporating a third-party’s well‑known trademark. See Red Bull GmbH v. Premiere-PTC-Network, WIPO Case No. D2008-1077.
The Panel also finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name does not resolve to an active website. Passive holding of a disputed domain name incorporating a third-party well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s lack of formal Response as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can also be found where a respondent knew or should have known of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the SKYSCANNER mark represents the goodwill of a well-known online travel services company. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s SKYSCANNER trademark when it registered the Domain Name, which is comprised of Complainant’s SKYSCANNER trademark combined with a geographic term. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.)
As discussed in the previous section, based on the uncontested facts, Respondent does not appear to have any legitimate interests or rights in the Domain Name and there does not appear to be any justification for Respondent’s choice to register the Domain Name. Accordingly, on balance, there does not appear to be any other reason for Respondent’s registration of the Domain Name other than for the possibility to trade off the goodwill and reputation of Complainant’s SKYSCANNER trademark or otherwise create a false association with Complainant. With no formal Response from Respondent, this claim is undisputed. This is additionally evidence of bad faith registration and use.
The fact that the Domain Name does not resolve to a website does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three-member panel, in Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant’s communications before the proceedings; and
(v) the respondent did not reply to the complainant’s contentions.
Here, Respondent did not formally respond to the Complaint and has provided no evidence of its intended use of the Domain Name. In fact, Respondent’s email response indicated that Respondent had no intention to use the Domain Name. However, it seems more likely than not that the Domain Name was registered to draw an association with Complainant. In addition, the Panel is satisfied that the SKYSCANNER trademark is sufficiently well-known that such an inference is both reasonable and probable. In light of these factors, the Panel finds that Respondent’s passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is being used in bad faith by Respondent.
In sum, the Panel finds that Respondent knew or should have known of Complainant’s trademark rights and that Respondent’s passive holding of the Domain Name is evidence of registration and use of the Domain Name in bad faith. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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 <worldskyscanner.site> be transferred to Complainant.
John C McElwaine
Date: February 11, 2020