Skyscanner Limited v. heng zhong
Claim Number: FA1501001599226
Complainant is Skyscanner Limited (“Complainant”), represented by Nick Bowie of Keltie LLP, United Kingdom. Respondent is heng zhong (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skyscanner.us>, registered with 1API GMBH.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2015; the National Arbitration Forum received payment on January 12, 2015.
On January 14, 2015, 1API GMBH confirmed by e-mail to the National Arbitration Forum that the <skyscanner.us> domain name is registered with 1API GMBH and that Respondent is the current registrant of the name. 1API GMBH has verified that Respondent is bound by the 1API GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skyscanner.us. Also on January 14, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SKYSCANNER trademark to offer advertising services, telecommunications connections and travel arrangement services, and to market those services.
Complainant holds a registration for the SKYSCANNER trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,242,752, registered May 15, 2007).
Respondent registered the <skyscanner.us> domain name on July 5, 2014.
The domain name is substantively identical to Complainant’s SKYSCANNER trademark.
Respondent has not been commonly known by the domain name.
Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The domain name resolves to a parking page displaying a link to another web page which an Internet user can use to place a bid for the purchase of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name primarily for the purpose of selling it to Complainant, or to a competitor of Complainant, for consideration in excess of the out-of-pocket costs reasonably related to its acquisition and maintenance.
Respondent has offered to sell the domain name to Complainant for GBP9999, which far exceeds Respondent’s costs for its registration and maintenance.
Respondent registered the domain name in order to prevent complainant from reflecting the SKYSCANNER mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct.
On two other occasions Respondent has been a party to UDRP proceedings in which it failed to respond to the complaints filed against it, and, in both cases, the proceedings were resolved by transfers of disputed domain names to the affected complainants.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent, as applicable, in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond to a complaint filed under the governing Policy allows all reasonable inferences of fact in the allegations of a complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the SKYSCANNER trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding that a complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO).
Turning to the core question posed by this branch of the usTLD Policy, we find from a review of the record that the disputed <skyscanner.us> domain name is substantively identical to Complainant’s SKYSCANNER trademark. The domain name fully incorporates the mark and merely adds the top-level country-code “.us.” This alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002)
Respondent’s … domain name is identical to Complainant’s … mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the … country-code …. Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis ….
See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Under the usTLD Policy, Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the usTLD Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the <skyscanner.us> domain name. We also note that there is no evidence in the record suggesting that Complainant has given Respondent permission to use the SKYSCANNER trademark in a domain name. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “heng zhong,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of the Policy. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by a contested domain name, and so failed to show that it had acquired rights to or legitimate interests in that domain name as provided in the Policy, based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not using the <skyscanner.us> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, in that the domain name resolves to a parking page which displays a link to which Internet users can resort to place a bid for the purchase of the domain name, and in that Respondent has solicited Complainant to pay to purchase it for a sum well in excess of Respondent’s costs to acquire and maintain the domain name. We agree with those panels that have concluded that the registration of a domain name for the purpose of selling it is evidence of a lack rights to or legitimate interests in it as provided in the Policy. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights to or legitimate interests in a contested domain name where a respondent registered that domain name with the intention of selling it). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggested that that respondent had no rights to or legitimate interests in that domain name under the applicable provisions of the Policy.
The Panel therefore finds that Complainant has satisfied the requirements of this head of the Policy.
We are persuaded by the evidence that Respondent has registered the disputed <skyscanner.us> domain name for the purpose of selling it to Complainant, or to a competitor of Complainant, for a price far in excess of Respondent’s costs to obtain and maintain the domain name. Under the usTLD Policy, this stands as proof of Respondent’s bad faith registration of the domain name. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that a respondent demonstrated bad faith in the registration of a contested domain name where it demanded of a complainant monetary compensation beyond its out-of-pocket costs in exchange for the domain name).
We are also convinced by the evidence that, as alleged in the Complaint, Respondent has registered the <skyscanner.us> domain name in order to prevent Complainant from reflecting its SKYSCANNER trademark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. This too is proof of Respondent’s bad faith in the registration of the domain name. See, for example, Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (finding prior proceedings resulting in the transfer of contested domain names to affected complainants to be evidence of a pattern of bad faith domain name registrations sufficient to stand as proof of bad faith registration of the domain name there in issue).
For these reasons, the Panel finds that Complainant has met its obligations of proof under the usTLD Policy.
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <skyscanner.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2015
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