WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. fre nota
Case No. D2020-2690
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is fre nota, Georgia.
2. The Domain Name and Registrar
The disputed domain name <skyscanner.blue> 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 October 14, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 20, 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 October 20, 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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. Respondent sent email communications on October 20, 2020 and October 28, 2020. No formal Response was filed with the Center. On November 18, 2020, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 15, 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 owner of registrations for the word, and word and design/device, trademark SKYSCANNER on the registers of various trademark offices, including (but not limited to), at the United Kingdom Intellectual Property Office (UKIPO), registration number 2313916, registration dated April 30, 2004, in international classes (ICs) 35, 38, and 39, covering, inter alia, advertising and related services via the Internet relating to travel, and providing travel information and arrangement services from a website, and; international registration under the Madrid System, registration number 1030086, registration dated December 1, 2009, in ICs 35, 39, and 42, designating more than 35 countries, with registration granted in virtually all designated countries. Georgia is among the designated countries, ex officio examination was completed without objection in 2014, and the reserved time for opposition or objection has passed.1
Complainant operates a widely-used commercial website at which Internet users research and book travel arrangements. Complainant’s principal website at “www.skyscanner.net” attracts 100 million visits per month, and it ranks among the top 2,000 most visited websites worldwide. Complainant’s services are available in more than 30 languages. Complainant was acquired by Ctrip, China’s largest online travel agency, in November 2016, in a transaction that received substantial international media attention.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on September 30, 2020.
As of the date of initiation of this proceeding, the website identified by the disputed domain name shows that the account has been suspended. Complainant has indicated that the suspension followed its take own request to the hosting company. According to Complainant, prior to the takedown the website identified by the disputed domain name replicated Complainant’s trademark and offered travel arrangement services to Internet users. In email correspondence to the Center dated October 20, 2020, Respondent indicated that the domain for his search site for airline tickets had been changed, advising “do not worry the site does not work on the domain”.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark SKYSCANNER and that the disputed domain name is identical or confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not own trademark rights in any trademarks incorporated in the disputed domain name; (2) Complainant has not authorized or licensed Respondent to use its trademark; (3) Respondent has not been commonly known by the disputed domain name; (4) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for fair or legitimate noncommercial use; (5) Respondent has used the disputed domain name to take unfair commercial advantage of Complainant and its trademark, and; (6) Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name and that Internet users would mistakenly assume an association between Respondent’s website and Complainant.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name on September 30, 2020 and must have been aware of the reputation of Complainant when it did so; (2) Respondent registered the disputed domain name highly similar to Complainant’s trademark for the demonstrated purpose of associating it with a website offering travel arrangement services directly competitive with those of Complainant for Respondent’s financial benefit by creating a likelihood of confusion as to affiliation with Complainant; (3) Respondent is using the disputed domain name to block registration of that same domain name by Complainant, and; (4) “passive holding” of a disputed domain name in circumstances such as those present here – where there is neither potential good faith use nor a justifying explanation – constitutes bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent by email to the Center indicated that it had discontinued using the disputed domain name in connection with a travel arrangement website.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent. Respondent replied informally by email to the Center indicating that Respondent received email notice. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark SKYSCANNER, including by registration at the UKIPO and under the Madrid System (including in Georgia), and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the SKYSCANNER trademark.
The disputed domain name directly incorporates Complainant’s distinctive trademark in its entirety, appending the “.blue” generic Top-Level Domain (“gTLD”). Direct incorporation of Complainant’s visually distinctive trademark in its entirety in the disputed domain name is sufficient to establish that the disputed domain name is identical to Complainant’s trademark within the meaning of the Policy. Addition of the “.blue” gTLD does not affect the analysis under the circumstances presented here.
The Panel determines that Complainant has established rights in the trademark SKYSCANNER and that the disputed domain name is identical to that trademark within the meaning of the Policy.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not formally replied to the Complaint (although by email stating that access to the related website has been suspended) and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has indicated that Respondent used the disputed domain name identical to Complainant’s trademark to direct Internet users to a commercial website offering travel arrangement services directly competitive with those of Complainant. Respondent has informally replied to the Complaint indicating that it has discontinued using the disputed domain name in connection with travel arrangement services (albeit such use was apparently suspended by its hosting service at Complainant’s request). Respondent did not contest Complainant’s allegations. Respondent’s use of the disputed domain name does not constitute legitimate noncommercial or fair use, and it does not otherwise establish rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Given Complainant’s substantial Internet presence in the field of online travel arrangement services, and noting the use of the disputed domain name for a competing site, Respondent must have been aware of Complainant’s rights in its trademark when it registered and used the disputed domain name. Respondent registered and used the disputed domain name that is identical to Complainant’s trademark intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source, sponsor or affiliate of Respondent’s commercial travel arrangement services website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 disputed domain name <skyscanner.blue> be transferred to Complainant.
Frederick M. Abbott
Date: December 29, 2020
1 Panel visit of December 22, 2020 to WIPO Madrid Monitor regarding international registration number 1030086.