The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sergey Vydrin, Russian Federation.
The disputed domain name <skyscanner.pw> (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 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 June 18, 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 June 18, 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 the Respondent of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on July 27, 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.
The Complainant has utilized its trademark SKYSCANNER in connection with its online travel search and booking business since 2003. The Complainant owns various trademark registrations covering the SKYSCANNER trademark, including International Trademark Registration No. 900393 (registered on March 3, 2006), International Trademark Registration No. 1030086 (registered on December 1, 2009), United Kingdom Trademark Registration No. UK00002313916 (registered on April 30, 2004), Canadian Trademark Registration No. TMA786689 (registered on January 10, 2011), and New Zealand Trademark Registration No. 816550 (registered on October 7, 2010).
The Respondent registered the Disputed Domain Dame <skyscanner.pw> on February 4, 2018. The Disputed Domain Name does not resolve to any active website.
The Disputed Domain Name is identical to the Complainant’s trademark. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”).
The Complainant makes specific reference to the following comments, provided by the panel in Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983: “[t]he Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its ‘Skyscanner’ websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation.”
At the time of the current Complaint, the Complainant’s website “www.skyscanner.net” attracts 100 million visits per month and, to date, its SKYSCANNER smart device app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies. Further, as of November 12, 2019 the Complainant’s website “www.skyscanner.net” was ranked 1,671 globally for Internet traffic and engagement and 107 in the United Kingdom.
The Complainant has not given its consent for the Respondent to use its registered trademark or virtually identical variations thereof in a domain name registration (or in any other manner). To the best of the Complainant’s knowledge the Respondent is not commonly known as “Skyscanner”. However, even if the Respondent does refer to itself by this name the Complainant submits that the Respondent’s use of this name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the Disputed Domain Name (under the Policy).
The Disputed Domain Name is inactive. There is no evidence that the Respondent has made demonstrable preparations to use the Disputed Domain Name for legitimate purposes, nor is there any evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods and/or services.
Not only had the Complainant been operating for 16 years by the time the Disputed Domain Name were registered, but it had been the subject of international media exposure in November 2016 after the Complainant was acquired by Ctrip, China’s largest on-line travel agency in a deal worth approximately GBP 1.4 billion.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has demonstrated its ownership of various registrations covering the SKYSCANNER trademark, such as United Kingdom Trademark Registration No. UK00002313916, International Trademark Registration No. 900393, and Canadian Trademark Registration No. TMA786689. It has demonstrated its use of the trademark at its website at “www.skyscanner.net”.
The Disputed Domain Name reflects the Complainant’s trademark in its entirety, with the addition of the “.pw” TLD, which refers to Palau. While customers may use the Complainant’s website to search flights to Palau, the Panel does not believe this is particularly relevant. Nevertheless, it is the general practice to ignore TLDs when determining confusing similarity, and the Panel sees no reason not to do so in this instance.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with the Disputed Domain Name.
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
The complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
First, the Complainant has asserted that it did not give any authorization or license to the Respondent to use its trademark to register the Disputed Domain Name.
Additionally, the Disputed Domain Name is not in use, and therefore the Respondent is not making any bona fide use of the Disputed Domain Name. The Complainant asserts that in view of the reputation of its trademark as a well-known trademark, no third party could make any non-infringing use of the Disputed Domain Name. The Panel also notes that based on WhoIs information, the Respondent is not commonly known by Skyscanner or any variant thereof.
As the Respondent did not respond to the Complainant’s contentions, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Complainant enjoys exclusive rights to its SKYSCANNER trademark in connection with its global online travel search and booking business. The Complainant’s purchase by Ctrip, China’s largest online travel agency, in November 2016 generated a significant amount of worldwide media coverage. The Panel concurs with prior UDRP decisions in finding that SKYSCANNER is a well-known trademark. See, e.g., Skyscanner Limited v. Basit Ali,supra; Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481; and Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs kananthan,WIPO Case No. D2019-0988.
As SKYSCANNER is a well-known distinctive mark, used for a world-wide Internet-oriented travel business, and in the absence of any reply by the Respondent, the Panel finds that the Respondent could not have registered the Disputed Domain Name without awareness of the Complainant’s prior rights. The Panel notes the analysis in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which held that “the passive use of a widely known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith” can amount to registration and use in bad faith.
Accordingly, the Complainant has satisfied 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 <skyscanner.pw> be transferred to the Complainant.
Date: August 25, 2020
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