WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-0017
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <skyscannertv.com> (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 January 6, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 7, 2020, 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 Complainant on January 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 9, 2020.
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 Respondent of the Complaint, and the proceedings commenced on January 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2020.
The Center appointed John C. McElwaine as the sole panelist in this matter on February 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
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, 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 (the “SKYSCANNER trademark”).
On December 6, 2019, Respondent registered the Domain Name with the Registrar. The Domain Name resolves to a website featuring pay-per-click links.
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 further alleges that Complainant’s website located at “www.skyscanner.net” attracts 100 million visits per month and, to date, its SKYSCANNER smart device app has been downloaded over 70 million times. Complainant asserts that its services are available in over 30 languages and in seventy currencies. Complainant alleges that the Domain Name is comprised of Complainant’s SKYSCANNER trademark and the generic term “tv” and that the addition of “tv” does not distinguish the Domain Name from 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 word “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 “skyscanner”. In addition, the Complainant asserts that the SKYSCANNER trademark is distinctive and famous. Complainant further contends that Respondent has parked the Domain Name and that the website displays pay-per-click links advertising travel arrangement services belonging to the Complainant’s competitors. As a result, Complainant asserts that it has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name, which Respondent cannot rebut.
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 years of prior 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. In addition, Complainant further alleges that the Respondent chose to register a domain name incorporating Complainant’s SKYSCANNER trademark in order to attract traffic to its website and encourage visitors to access the pay-per-click links displayed, thereby generating revenue for the Respondent. As such, Complainant asserts that the Domain Name is used to mislead consumers as to an affiliation with or connection to Complainant, for commercial gain.
In addition, Complainant alleges that the Domain Name is listed for sale for USD 500. As a result, Complainant asserts bad faith because Respondent acquired the Domain Name primarily for the purpose of selling the Domain Name to Complainant or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Lastly, Complainant argues that there can be a finding of registration and use in bad faith where there is passive use of a widely known trademark in a domain name where there is no response and no explanation as to why the use could be good faith. Here, Complainant alleges that no response from Respondent explaining its action is evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
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 to 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. The Domain Name contains Complainant’s SKYSCANNER trademark in its entirety, as a dominant element. The addition of the letters “tv” does not serve to distinguish the Domain Name from the SKYSCANNER 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 the Policy, paragraph 4(a)(ii), 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 the 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.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Carolina Rodrigues, Fundacion Comercio Electronico” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name.”) Moreover, the Panel notes that Respondent is a known cybersquatter. The Commissioners for HM Revenue and Customs v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2068 (“Complainant has cited over thirty cases where Respondent was found to have registered and used domain names in bad faith, all of which resulted in decisions against Respondent.”)
Complainant contends that it has never licensed or otherwise provided authorization for Respondent to use the SKYSCANNER trademark and Respondent is not an agent of Complainant. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of 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 complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010‑1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Furthermore, the Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in section 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the dictionary meaning of the Domain Name. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in a domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with advertisements that compete with Complainant’s travel-related services. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (“respondent’s use of the disputed domain name to establish a parking page was “plainly not ‘noncommercial’”).
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 default 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.
In this matter, Complainant contends that the registration by Respondent of a domain name, which contains Complainant’s well-known and unique SKYSCANNER trademark establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that said use of the domain name by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303. Here, Respondent has developed a website with content that references “Skyscannertv” and offers links to competing travel services indicating an intent to trade off the goodwill of the Complainant. Furthermore, and as also detailed above, the Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify the Respondent’s choice to register the Domain Name. With no response from the Respondent, this claim is undisputed and the Panel can infer bad faith registration.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location.” As discussed herein, Respondent registered the Domain Name, which is confusingly similar to Complainant’s SKYSCANNER trademark and developed a webpage providing links to Complainant’s competitors. See Identigene, Inc. v. Genetest Labs., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name); Virgin Enterprises Limited v. Balticsea LLC / Contact Privacy Inc. Customer 0134432592, WIPO Case No. D2016-2148 (finding that a general offering to sell the domain name is evidence of registration of the domain name in bad faith).
Lastly, Respondent has engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy. WIPO Overview 3.0, section 3.1.2. See Skyscanner Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018 (citing cases against Respondent including seven more where Complainant here has prevailed over Respondent), The Commissioners for HM Revenue and Customs v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2068.
For these reasons, the Panel holds that the Complainant has met its burden of showing that the Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(ii) of the Policy.
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, <skyscannertv.com>, be transferred to Complainant.
John C McElwaine
Date: February 24, 2020