WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Whois Foundation

Case No. D2019-2831

1. The Parties

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

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Whois Foundation, Panama.

2. The Domain Name and Registrar

The disputed domain name <espanolskyscanner.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 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 November 21, 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 November 22, 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 November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 19, 2019. 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 an online travel company with a website available in over 30 languages and used by 100 million people per month. The Complainant’s SKYSCANNER smart device app has been downloaded over 70 million times.

The Complainant owns rights in the trademark SKYSCANNER, such as International Trademark Registration Nos. 900393 (registered on March 3, 2006), 1030086 (registered on December 1, 2009) and 1133058 (registered on August 16, 2012).

The Respondent registered the Domain Name on June 21, 2017. The Domain Name resolves to a parked webpage containing pay-per-click links to third party businesses providing travel arrangement services.

5. Parties’ Contentions

A. Complainant

The Complainant has documented trademark registrations in the trademark SKYSCANNER. According to the Complainant, the Domain Name is highly similar to the Complainant’s trademark. The Domain Name takes the Complainant’s trademark in its entirety and the added term “espanol” merely serves to indicate a language in which the Complainant provides its services. The added term does not distinguish the Domain Name from the Complainant’s trademark in a meaningful manner.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. To the Complainant’s knowledge, the Respondent does not own any rights in any trademarks which comprise part or the entirety of the Domain Name, nor is the Respondent commonly known under this name. The Complainant has not given its consent for the Respondent to use its registered trademark in any manner.

Finally, the Complainant submits that the Respondent’s use of the Domain Name constitutes bad faith as the Respondent’s interest cannot be legitimate nor is there a bona fide use. The Domain Name points to a parking page containing pay-per-click links advertising travel arrangement services. The Respondent’s use is evidence of bad faith registration and use. Given the fame of the Complainant’s trademark, it is highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the Domain Name. Passive holding of a Domain Name which cannot be used legitimately constitutes registration and use in bad faith when the Domain Name is being used to prevent the Complainant from using the Domain Name containing its trademark. Moreover, the Complainant asserts and documents that the Domain Name has been offered for sale for USD 2,692.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark SKYSCANNER. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of “espanol” in front. The addition of such term does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Domain Name points to a parking page containing pay-per-click links advertising travel arrangement services. Such use is in the context of this case not bona fide.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Complainant’s trademark rights predate the Domain Name registration. The fact that the Domain Name resolves to a parked page containing pay-per-click links advertising travel arrangement services points to bad faith. Moreover, the Respondent has offered the Domain Name for sale for USD 2,692.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 <espanolskyscanner.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: December 23, 2019