WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Petrov Petya
Case No. D2020-0851
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Petrov Petya, United States of America.
2. The Domain Name and Registrar
The disputed domain name <skyscanner.wales> (the “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 April 7, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 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 April 14, 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 April 14, 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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on May 22, 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 a company providing online flight search and price comparison services under its trade mark SKYSCANNER. Currently, Complainant’s website “www.skyscanner.net” attracts 100 million visits per month and Complainant’s Skyscanner smart device application has been downloaded over 70 million times. Complainant’s services are available in over thirty languages and in seventy currencies.
Complainant is the owner of numerous trademark registrations for SKYSCANNER, including:
- International trademark registration No. 1030086, SKYSCANNER (word), designating, inter alia, the Russian Federation and the European Union, registered on December 1, 2009, for services in international classes 35, 39, and 42;
- International trademark registration No. 1133058, SKYSCANNER (logo), designating, inter alia, the United States of America, registered on August 16, 2012, for services in international classes 35, 39, and 42; and
- International trademark registration No. 900393, SKYSCANNER (word), designating, inter alia, the United States of America and the European Union, registered on March 3, 2006, for services in international classes 35, 38, and 39.
The disputed Domain Name was registered on March 20, 2020 and resolves to an inactive page.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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
A. Identical or Confusingly Similar
The Domain Name consists of the term “skyscanner”.
The generic Top-Level Domain (“gTLD”) “.wales” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is identical to the SKYSCANNER trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolves to an inactive page.
In addition, the Domain Name consists entirely of Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).
Furthermore, the Domain Name was registered with a privacy shield service.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As recognized by previous UDRP panels, Complainant’s trademark enjoys reputation (See, e.g., Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983).
Because the SKYSCANNER mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and by virtue of the nature of Complainant’s business, namely online travel information and search engine (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of SKYSCANNER (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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.wales>, be transferred to Complainant.
Date: June 5, 2020