Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Redacted for Privacy, Whois Privacy Protection Foundation / David Martinez, Mexico.
The disputed domain name <skyscannertravelmx.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 the Complainant on November 30, 2020 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 30, 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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default December 22, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 18, 2021. 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.
Complainant, a company based in London, United Kingdom, provides travel-related services to consumers around the world. Complainant owns several registrations for the SKYSCANNER mark, including International Registration No. 900393 (registered March 3, 2006) and International Registration No. 1030086 (registered December 1, 2009). Complainant is also the owner of the registration for the domain name <skyscanner.net> (registered July 3, 2002), which Complainant uses, along with its SKYSCANNER app, to offer its travel-related services to consumers globally.
The disputed domain name <skyscannertravelmx.com> was registered on October 5, 2020. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
Complainant contends that (i) the disputed domain name <skyscannertravelmx.com>, is identical or confusingly similar to Complainants’ trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the distinctive SKYSCANNER mark, which Complainant uses to offer travel-related services to consumers globally. Complainant further contends that its SKYSCANNER mark is well known to consumers, as shown by the Internet traffic to Complainant’s website associated with Complainant’s registered <skyscanner.net>, which receives over 100 million visits per month, and by the over 70 million downloads of Complainant’s SKYSCANNER app. Complainant further contends that its SKYSCANNER services are available to consumers in over 30 languages.
Complainant contends that Respondent has incorporated Complainant’s SKYSCANNER mark into the disputed domain name, and merely added the descriptive term, “travel,” along with the letters “MX,” which is the geographic designation for Mexico, where Complainant has established trademark rights via its international trademark registrations. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent did reply to Complainant’s contentions.
The Panel must first determine whether the disputed domain name <skyscannertravelmx.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates Complainant’s SKYSCANNER mark and merely added the descriptive term, “travel” along with the geographic descriptor “MX.”
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words, including geographically descriptive wording, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring <cbsone.com>); see also Pfizer Inc. v. Private Registration, WhoIsGuardService.com, WIPO Case No. D2015-1471 (transferring, inter alia <vgrsingapore.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a UDRP panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, and took steps to conceal its contact information, including from the registrar. Furthermore, Complainant has demonstrated a relatively high level of consumer exposure to its SKYSCANNER mark. See, for example, Skyscanner Limited v. Mojit Bajaj, WIPO Case No. D2016-1481 (transferring <skyscannertourism.com> and <skyscannertourisms.com>).
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph (4)(a)(iii) 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 <skyscannertravelmx.com> be transferred to Complainant.
Date: January 29, 2021
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