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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Miguel Angel

Case No. D2019-3131

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Miguel Angel, Mexico.

2. The Domain Name and Registrar

The disputed domain name <skyscanner-subscribe.com> (“Domain Name”) 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 18, 2019. On December 19, 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 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 December 20, 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 December 30, 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 January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2020.

The Center appointed Ellen B Shankman as the sole panelist in this matter on January 29, 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 date of the Domain Name registration was confirmed by the Registrar to be November 26, 2019.

The trademark SKYSCANNER serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant provided evidence of multiple trademark registrations for the SKYSCANNER mark including, inter alia, European Union (“EU”) designation of International TradeMark Registration No. 900393 for SKYSCANNER (registered on March 3, 2006), and EU designation of International TradeMark Registration No. 1030086 for SKYSCANNER (registered December 1, 2009) both for word marks/logos, that predate the date of the Domain Name registrations for, inter alia, advertising and travel services.

The Domain Name was registered on November 26, 2019. The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “404” error message, and the website currently appears to be inactive. According to evidence submitted by the Complainant the Domain Name used to resolve to a webpage with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant provided evidence of its rights and wide reputation in the field of travel. The Complaint submits that at the time of the current Complaint, the Complainant’s website “www.skyscanner.net” attracts 100 million visits per month and, to date, its SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies. Further, as of November 12, 2019, the Complainant’s website “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the United Kingdom. Therefore, the Complainant submits that it enjoys a global reputation in its SKYSCANNER trademark.

The Domain Name takes the Complainant’s SKYSCANNER trademark in its entirety and adds the term “subscribe”, which merely serves as an invitation to consumers to connect with the Complainant in some way. The Complainant submits that the Respondent registered the Domain Name in the knowledge of the Complainant’s rights. By October 25, 2019, the Complainant enjoyed a global reputation in its SKYSCANNER trademark, following 17 years of aggressive international growth. The Complainant’s trademark also enjoyed a great deal of exposure in the international media in November 2016, after the Complainant was acquired by Ctrip, China’s largest online travel agency in a deal worth approximately GBP 1.4 billion.

The Complainant submits that on the balance of probability, it can be no coincidence that the Respondent chose to register a Domain Name that replicates the Complainant’s distinctive trademark. Thus, the Complaint argues that the Respondent registered the Domain Name in bad faith. The Complainant further argues that the Respondent’s use of a WhoIs privacy service is designed to shield the Respondent from its identification in UDRP proceedings and points to the Respondent’s bad faith registration and use.

Further, the Domain Name is used in bad faith inasmuch as

(a) the Domain Name is used as a blocking registration to prevent the Complainant from using a domain name that is virtually identical to its rights, for legitimate commercial purposes and

(b) the Domain Name is used to create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complaint also contends that there is a realistic and serious threat posed by the Respondent’s continued ownership of the Domain Name, not least the threat of a diversion of custom and the inevitable damage to the reputation that the Complainant enjoys in its SKYSCANNER trademark.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark SKYSCANNER, in respect of advertising, business and travel services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic word “subscribe” does not prevent a finding of confusing similarity. Therefore, the Domain Name <skyscanner-subscribe.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SKYSCANNER.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the dictionary and/or descriptive term “subscribe” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

The Panel’s finding is consistent with the finding of the UDRP panel in Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983 in which the panel there found:

“The Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its “Skyscanner” websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation.”

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <skyscanner-subscribe.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. So far as the Complainant is aware, the Respondent does not own any registered rights in any trademarks which comprise part or the entirety of the Domain Name. Further, the Complainant contends that the term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. In fact, it is highly distinctive in the context of the services that the Complainant offers under its SKYSCANNER trademark. Therefore, there is no cause for any party other than the Complainant to use SKYSCANNER as a trademark in the course of business.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark SKYSCANNER and uses it for the purpose of misleading and diverting Internet traffic or to suggest an association with the Complainant. Although it now resolves to an error page, the Complainant provided evidence that the Domain Name previously pointed to a parking-page containing (“PPC”) links advertising travel, including of the Complainant’s competitors.

The Panel agrees with the Complainant’s argument that it is implausible to presume that the Respondent chose to adopt the Complainant’s trademark in the Domain Name for any other reason than to deliberately create a false impression of an association with the Complainant and to target its business.

The fact that the Domain Name currently points to an error message does not prevent a finding of registration and use in bad faith where there is passive holding and use of a widely known trademark where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003). The Panel finds that on the balance of probability, the Respondent has registered and used the Domain Name in bad faith.

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademark, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <skyscanner-subscribe.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: January 31, 2020

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