WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Yurii Chebakov

Case No. D2021-2148

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom “UK”), represented by Lewis Silkin LLP, United Kingdom.

The Respondent is Yurii Chebakov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyscaner.space> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, 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 July 12, 2021, 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 July 12, 2021.

On July 12, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and provided additional arguments in support of its request in the Complaint. The Respondent has not provided any response regarding the language of the proceeding.

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 in both English and Russian, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2021.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on August 12, 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.

4. Factual Background

The Complainant is a UK based company founded back in 2003. The Complainant operates an online flight search engine at <skyscanner.net> and <skyscanner.com> through which consumers can search for and book travel arrangements. The Complainant also offers a SKYSCANNER mobile application through which consumers can likewise search for and make travel arrangements.

In 2016, the Complainant was acquired by Ctrip (now Trip.com Group) in a deal valued at GBP 1.4 billion..

The Complainant has registered a number of SKYSCANNER trademarks worldwide, including in the Russian Federation, for a broad range of services related to advertising, travel information and arrangement, operating of a search engine relating to travel. Some of the SKYSCANNER trademark registrations are indicated below:

- International Registration for SKYSCANNER No. 1030086 registered on December 1, 2009 for the services in classes 35, 39, 42, designating inter alia the Russian Federation;

- International Registration for SKYSCANNER and design No. 1133058 registered on August 16, 2012 for the services in classes 35, 39, 42, designating inter alia the Russian Federation;

- International Registration for SKYSCANNER and design No. 1133058 registered on August 16, 2012 for the services in classes 35, 39, 42, designating inter alia the Russian Federation;

- International Registration for SKYSCANNER No. 1481492 registered on June 6, 2019 for the services in classes 43, designating inter alia the Russian Federation;

- United Kingdom trademark Registration for SKYSCANNER No. UK00002313916 registered on April 30, 2004, in classes 35, 38 and 39;

- Canadian trademark Registration for SKYSCANNER No. TMA786689, registered on January 10, 2011, in classes 35, 38 and 39; and

- New Zealand trademark for SKYSCANNER Registration No. 816550, registered on October 7, 2010, in classes 35, 39 and 42.

The Complainant is the owner of the domain names <skyscanner.net> and <skyscanner.com> since July 3, 2002. 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 thirty languages and in seventy currencies. Further, as of November 12, 2019, the Complainant’s website “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the UK.

The Russian version of the Complainant’s website is accessible at the website “www.skyscanner.ru”, which the Complainant registered on March 31, 2007.

The Respondent appears to be a Russian individual. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on October 30, 2020. The disputed domain name does not currently resolve to an active website or page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in SKYSCANNER trademark by virtue of its longstanding use and registration of the mark in a number of jurisdictions around the world.

A number of previous UDRP panels has confirmed the Complainant’s rights and fame of the SKYSCANNER trademark.

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s SKYSCANNER mark as it is virtually identical to the Complainant’s SKYSCANNER trade mark, the only difference being that the disputed domain name omits a letter “n”.

The “.space” Top-Level-Domain (“TLD”) should be disregarded during the confusing similarity analysis, because it is a functional element, and it can be considered as highly descriptive considering the Complainant’s worldwide activities.

The term “skyscaner” is not descriptive in any way, nor does it have any dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registrations.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent (i) owns no rights in the SKYSCANNER mark, (ii) is not commonly known by the name “skyscaner,” (iii) has made no legitimate use of the disputed domain name.

The disputed domain name replicates the Complainant’s well-known trade mark in its entirety, therefore, the Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the SKYSCANNER trademark when he registered the disputed domain name.

In the absence of any meaningful justification from the Respondent, the Complainant considers that the Respondent’s passive holding of the disputed domain name constitutes use in bad faith, especially because the Respondent has taken steps to mask its identity through the WhoIs privacy services. The Complainant notes that previous WIPO UDRP panels under similar circumstances came to the same conclusions (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

According to paragraph 11(a) of the Rules “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

In this case, the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Russian. The Panel also notes that the Respondent is located in the Russian Federation.

The Complainant filed the Complaint in English and requested English to be the language of this proceeding indicating that, the Respondent clearly has a working knowledge of English, not least because it has chosen to target the Complainant’s SKYSCANNER trademark, which is a portmanteau of two English words, and that requiring the Complainant to translate the Complaint and all documents into Russian would cause unjustified delay in resolution of this case.

The Panel notes that the disputed domain name is composed of Latin characters, and that “skyscaner” is not a dictionary word or phrase in Russian.

In previous similar cases, prior UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

While applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.

The Center duly notified the Respondent in English and in Russian of the request of the Complainant to use English as the language of the proceeding. The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English.

Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Russian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a formal Response, and did not use an opportunity to argue his case.

The Center also appointed the Panel who is familiar with both English and Russian in order to treat the Parties equally in the proceeding.

Therefore, the Panel concludes that each Party of the proceeding was treated fairly and was provided a fair opportunity to present its case.

The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceeding and adjudication of this matter.

Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

The Complainant has proved its rights in the SKYSCANNER trademark through international registrations dating back to 2009 designating numerous countries worldwide including the Russian Federation, and also through national trademark registrations registered in various countries of the world.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

Furthermore, the Panel considers that the disputed domain name is confusingly similar and almost identical to the Complainant’s SKYSCANNER trademark.

The Panel notes that the disputed domain name incorporates the Complainant’s trademark SKYSCANNER in its entirety and is amount identical to the Complainant’s trademark. The disputed domain name omits a letter “n” which does not prevent the Complainant’s trademark from being recognizable in the disputed domain name.

The TLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.2 of the WIPO Overview 3.0. The practice of disregarding the TLD applies also to “new gTLDs” such as gTLDs “.space”. Previous UDRP panels considering this issue came to the same conclusion. Please see LEGO Juris A/S v. lin zhang, WIPO Case No. D2020-0675. Therefore, the Panel disregards the TLD for the purposes of this comparison.

The Panel finds that according to a side-by-side comparison the disputed domain name reproduces the Complainant’s SKYSCANNER trademark and, thus, that the Complainant’s SKYSCANNER trademark is recognizable within the disputed domain name.

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that the complainant frequently address to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy) and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

The Panel finds that because the disputed domain name is confusingly similar and almost identical to the Complainant’s SKYSCANNER trademark any use of such domain name by the Respondent carries a high risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

According to the Complainant, the Respondent is not an authorized or licensed to use the SKYSCANNER trademark in the disputed domain name, as well as not in any way affiliated with the Complainant.

The Panel also notes that the Respondent failed to come forward with any relevant evidence confirming use or demonstrable preparations to use of the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Taking into account the fame, reputation and long period of substantive use of the Complainant`s SKYSCANNER trademark online and in the corresponding the Complainant’s domain names and websites, and in the absence of evidence to the contrary, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the Policy).

According to the Registrar’s information, “Yurii Chebakov” is the registrant of the disputed domain name, therefore the Panel did not find any evidence that the Respondent is commonly known by the disputed domain name. The Panel concludes that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.

Thus, the Panel finds that the Complainant has satisfied the second element of the Policy, namely paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

While considering “passive holding” cases the previous panels did not rule out a finding of bad faith. Instead, the previous panels relied on a combination of factors relevant in applying the passive holding doctrine including: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0.

As the Panel established above, the Complainant’s SKYSCANNER trademark was widely used in commerce well before the registration of the disputed domain name on October 30, 2020. The Complainant, its SKYSCANNER trademark and its service are very popular among travelers globally and received a substantial level of media attention especially during acquisition by Ctrip in 2016.

The Panel finds that the Respondent knew of the Complainant’s SKYSCANNER trademark when registering the disputed domain name. This conclusion is supported by the fact that the disputed domain name is confusingly similar and almost identical to the Complainant’s SKYSCANNER trademark (except the TLD), and that the Respondent did not start any a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Furthermore, the Responded failed to submit a response or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name.

The Panel concludes that the Respondent’s intent for registering the disputed domain name, which reproduces the Complainant’s trademark omitting a letter “n” has always been to capitalize on the goodwill of the Complainant’s trademark.

Furthermore, the Panel finds it implausible that the disputed domain name could be used by the Respondent in good faith considering that it is almost identical to the Complainant’s trademark. The Panel finds that the fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith in these circumstances.

Therefore, under the totality of the circumstances, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 disputed domain name <skyscaner.space> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: August 27, 2021