WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Domain Administrator
Case No. D2020-2939
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Domain Administrator, China.
2. The Domain Name and Registrar
The disputed domain name <skycanner.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 6, 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 November 6, 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 November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 3, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 8, 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, including in China (relevant here).
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 2000 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 or acquired the disputed domain name on May 13, 2005.
Complainant has provided a DomainTools report showing that sometime between May 1, 2019, and May 15, 2019, the registrar of the disputed domain name changed from Internet Domain Service BS Corp. to the current Registrar, Above.com. The name of the Registrant was protected by a privacy shield at both rRegistrars. The Internet Domain Service BS Corp. record of registration listed the registrant as “Domain Admin”, “Whois Privacy Corp.”, which is essentially the same as the “Domain Administrator” name of the registrant disclosed by the current Registrar, Above.com. The actual identity of the owner of registration in each instance cannot be determined from the DomainTools report. The record before the Panel does not contain conclusive evidence regarding whether ownership of registration changed hands in 2019, or whether there was a change only in the identity of the registrar.
As of the date of the initiation of this proceeding, the disputed domain name was redirected to Complainant’s “www.skyscanner.net” website. As of November 11, 2020, the disputed domain name was directed to a search web page with pay-per-click (“PPC”) links to Travel Destinations, Travel Deals for Seniors, Best Travel Pants, International Travel Insurance, 10 Best Travel Destinations and Travel Itinerary Planner.
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
A. Complainant
Complainant alleges that it owns rights in the trademark SKYSCANNER and that the disputed domain name is 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; (3) 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; (4) 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 acquired the disputed domain name in May 2019 and should 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 financial benefit to create a likelihood of confusion as to affiliation with Complainant; (3) when a domain name targets a famous third-party brand Respondent’s motivations can be disregarded, 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.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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 in Hong Kong, China, because of false and/or incomplete address information provided by Respondent. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. 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, 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 is identical to Complainant’s trademark, with the exception of a missing “s” following “sky”. Complainant’s trademark is lengthy and visually distinctive. A casual Internet user would be unlikely to notice the letter missing from Complainant’s trademark when viewing the disputed domain name. The disputed domain name <skycanner.com> is confusingly similar to Complainant’s SKYSCANNER trademark.
The Panel determines that Complainant has established rights in the trademark SKYSCANNER and that the disputed domain name is confusingly similar 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 replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s website does not establish rights or legitimate interests in favor of Respondent. Such use is the equivalent of directing the disputed domain name to a parking page that acts only as a “holding” mechanism.
More recently, the disputed domain name has been directed to a search page with multiple links to travel and travel-related services. Because these services are within Complainant’s field of commercial activity, such use potentially diverts Internet users from Complainant’s to Respondent’s website (and associated links), taking unfair advantage of Complainant’s trademark rights. Such use does not constitute fair or other legitimate use of the disputed domain name by Respondent.
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] web site…”.
Complainant has argued that Respondent acquired the disputed domain name in mid-2019 following the acquisition of Complainant buy a major China-based Internet travel service in November 2016. Complainant’s theory is that Respondent, apparently based in Hong Kong, China, acquired the disputed domain name to take advantage in some way of expanded interested in Complainant’s services based on this acquisition. In the meantime, according to Complainant, Respondent is engaged in bad faith passive holding of the disputed domain name.
While Complainant’s theory is plausible, and while Respondent has not affirmatively rebutted it, the documents before the Panel do not convincingly show a change in ownership of the disputed domain name. There is conclusive evidence only of a change in 2019 in the identity of the registrar. In such circumstances, the Panel prefers to rely on other parts of the record that support a finding of bad faith registration and use, without depending either on a change in ownership or on a finding regarding passive holding.
According to the registrar verification, Respondent registered the disputed domain name in 2005, after registration of Complainant’s trademark at the UKIPO. Respondent maintained its identity behind a privacy shield, and the physical location of Respondent at the time of registration is unknown. (It is notable that Respondent provided a false address in its updated record of registration such that even now the physical location of Respondent is unknown.) However, because of the close similarity between the disputed domain name and the lengthy and distinctive trademark of Complainant, the Panel infers – without contradiction from Respondent – that it was aware of Complainant and its trademark when it registered the disputed domain name, and sought to take advantage of Complainant and its trademark rights.
Respondent has recently used the disputed domain name – confusingly similar to Complainant’s distinctive trademark -- to direct Internet users to a website offering links to services in direct competition with those of Complainant. Such use presumably earns revenues for Respondent. Respondent has used the disputed domain name that is confusingly similar to Complainant’s SKYSCANNER trademark intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source, sponsor or affiliate of Respondent’s commercial 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.
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, <skycanner.com>, be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: December 21, 2020
