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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Iftikhar Ali Bhatti, Skyscannertravel

Case No. D2020-0109

1. The Parties

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

The Respondent is Iftikhar Ali Bhatti, Skyscannertravel, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <skyscannertravels.com> is registered with OnlineNic, Inc. d/b/a
China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, 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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 19, 2020.

The Center appointed Dennis A. Foster as the sole panelist in this matter on March 6, 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 a United Kingdom enterprise that sells online travel agency services. In connection with its services, the Complainant uses the SKYSCANNER service mark that, among other valid registrations, has been registered with the United Kingdom Intellectual Property Office (“UKIPO”) (Registration No. 2,313,916, registered on April 30, 2004).

The Respondent is the owner of the disputed domain name <skyscannertravels.com>, which was registered on December 19, 2019. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

- The Complainant is a United Kingdom enterprise that operates as an online travel agency. In connection with its operations, the Complainant has used the SKYSCANNER service mark for considerably longer than a decade. That mark is registered with many trademark authorities throughout the world. The Complainant also does business through its domain name <skyscanner.net>.

- The disputed domain name, <skyscannertravels.com>, is virtually identical to the Complainant’s SKYSCANNER service mark. The disputed domain name contains the full mark and adds merely the generic word “travels”. That word relates directly to the Complainant’s business and therefore does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark. Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.com” is of no consequence.

- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not consented to the use of its service mark by the Respondent. The disputed domain name does not resolve to an active website, and there is no evidence that the Respondent is using, or planning to use, the disputed domain name for a bona fide offering of goods or services or for any legitimate purpose. Also, there is no indication that the Respondent is commonly known as the disputed domain name. Moreover, although the WhoIs entry for the disputed domain name lists “skyscannertravel” as the registrant organization, that listing is false and likely an attempt by the Respondent to misappropriate the Complainant’s official office in Pakistan without authorization.

- The disputed domain name was registered and is being used in bad faith. The Respondent’s passive nonuse of the disputed domain name, which is confusingly similar to the Complainant’s famous service mark, constitutes bad faith registration and use under the Policy. Furthermore, the Complainant is blocked from using the disputed domain name, which is further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Per paragraphs 4(a)(i)-(iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, <skyscannertravels.com>, if the Complainant shows that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has presented the Panel with conclusive evidence that the Complainant possesses a valid UKIPO registration for the service mark SKYSCANNER, and thus the Panel finds that the Complainant has sufficient rights in that mark to satisfy the threshold requirement of Policy paragraph 4(a)(i). See, Daily Mail and General Trust Plc v. Sun Stefen, WIPO Case No. D2018-0818 (“The Panel accepts the uncontested evidence in the form of a copy of the UKIPO registration document that the Complainant has rights as required under the Policy in the trademark DMGT.”); and Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481 (“The Panel has verified that the Complainant has rights in the SKYSCANNER trade mark...”).

The disputed domain name, <skyscannertravels.com>, is clearly not identical to the SKYSCANNER service mark. However, the Panel believes that the differences, the addition of the descriptive term “travels” and the gTLD “.com” fail to create a meaningful distinction between the two. Prior UDRP panels have held consistently that the addition of a descriptive term to an established mark within a disputed domain name does not eliminate confusing similarity between that disputed domain name and that mark. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s service mark for the purposes of Policy paragraph 4(a)(i). See, JetBlue Airways Corporation v. Domain Administrator, PrivacyGuardian.org / D. Taylor, Northpoint, Inc, WIPO Case No. D2019-2839 (finding <jetbluetravel.com> to be confusingly similar to the JETBLUE mark); and Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741 (finding <gtatravels.com> to be confusingly similar to the GTA mark).

Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In order to prevail as to this second element required under the Policy, the Complainant must make at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, whereupon the burden shifts to the Respondent to present evidence that it does possess those rights or legitimate interests. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Since the Complainant has established above that the disputed domain name is confusingly similar to its valid service mark, and asserts without reservation that the Respondent has no permission to use the Complainant’s mark in any manner, the Panel determines that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent did not file a response, and thus has presented no evidence. Therefore, the Panel will examine the record overall, including any relevant contentions found in the Complaint, to determine whether there is any support for the proposition that the Respondent has rights or legitimate interests in the disputed domain name. In doing so, the Panel will accept all reasonable contentions as true unless obviously false. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149 (“The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true.”).

In this case, the Panel accepts as true the Complainant’s contention that the disputed domain name does not resolve to an active website. This contention leads the Panel to conclude that the Respondent cannot rely on Policy paragraph 4(c)(i) to support its position because the disputed domain name is neither in use nor being demonstrably prepared for use in a bona fide offering of goods or services. See, Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains By Proxy, LLC / Regeneron Careers, WIPO Case No. D2017-0013 (“...the disputed domain name resolves to an inactive website. Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services...”); and Sanofi v. Kelly, cti, WIPO Case No. D2016-1615 (“...the Respondent is not making a bona fide offering of goods and services once the disputed domain name resolves to an inactive page.”).

Regarding Policy paragraph 4(c)(ii), the Panel can see plainly that there is no reason to believe that the Respondent, Iftikhar Ali Bhatti, is commonly known as the disputed domain name <skyscannertravel.com>. On the other hand, that paragraph also refers to a “business or other organization” associated with the Respondent as possibly being commonly known as the disputed domain name. In this case, as acknowledged by the Complainant, the WhoIs record also lists “skyscannertravel” as the registrant organization for the disputed domain name. However, the Panel cannot find evidence in the record or on the Internet that said name pertains to any entity that might be connected with the Respondent. In fact, as indicated by the Panel’s search, the organization name so found on the WhoIs leads only to the Complainant and its operations. In conducting its analysis, the Panel notes that ultimately the Respondent bears the burden of establishing that its entity is commonly known as the disputed domain name. Therefore, the Panel believes there is no basis to conclude that a business or other organization owned by, or associated with, the Respondent is commonly known as the disputed domain name.

Finally, as the Panel has found that no use is being made of the disputed domain name, the Panel concludes that Policy paragraph 4(c)(iii) is inapplicable to the present case.

Given the analysis above, the Panel finds that neither the Respondent nor the record has furnished a successful rebuttal to the Complainant’s prima facie case.

Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(b) suggests four circumstances that could cause a UDRP panel to determine that a disputed domain name has been registered and is being used in bad faith. However, the Panel is not limited to citing one or more of those circumstances to support a finding of bad faith, but may find other reason(s) to reach such a conclusion. See, Revevol SARL v. Whoisguard Inc. / Australian Online Solutions, Domain Support, WIPO Case No. D2015-0379 (“The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.”); and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager; WIPO Case No. D2007-0062 (“The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.”).

In this case, the Panel has accepted as fact that the disputed domain name is inactive. Many prior UDRP panels have found that passive holding of a disputed domain name can constitute bad faith registration and use of that domain name. See, WIPO Overview 3.0, section 3.3; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the instant case, the Panel notes that along with no use being made of the disputed domain name, no Response was filed and the Complainant and its mark enjoy significant worldwide reputations. See, Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481 (“...in 2016. The Complainant and the SKYSCANNER trade mark were widely known by this time, particularly in the travel and tourism industry.”). All of these circumstances lead the Panel to find that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

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, <skyscannertravels.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: March 20, 2020

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