WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Domain May Be For Sale, Check afternic.com Domain Admin / Hulmiho Ukolen
Case No. D2017-1946
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Domain May Be For Sale, Check afternic.com Domain Admin / Hulmiho Ukolen of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <skysscanner.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2017, 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 October 10, 2017, 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 amended Complaint on October 10, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter referred to as 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 October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 14, 2017. 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 Skyscanner Limited, a company incorporated in the United Kingdom. The Complainant is the creator of a travel search and price comparison website hosted at a range of domains in various jurisdictions, including <skyscanner.net>.
The Complainant owns numerous trademark registrations worldwide for SKYSCANNER and variations thereof, including:
- International Trade Mark Registration No. 900393 for SKYSCANNER, designating the European Union and United States of America, registered on March 3, 2006; and
- International Trade Mark Registration No. 1030086 for SKYSCANNER, designating the European Union and various other countries.
The trademarks are registered in a number of classes, among these, "advertising services provided via the Internet, opinion polling, data processing, provision of business information (Class 35), "providing access to a search engine relating to travel" (Class 38) and "travel information and arrangement services provided from an Internet website" (Class 39).
The Respondent appears to be a resident of Finland and registered the disputed domain name <skysscanner.com> on July 19, 2016.
The Complainant provided evidence that the Respondent has used the domain name to redirect Internet users to a website at <skychecker.co> which offered the search for cheap flights and hotels.
5. Parties' Contentions
The Complainant submits that its SKYSKANNER mark enjoys considerable reputation and is exclusively distinctive of the Complainant.
The Complainant further asserts that disputed domain name is identical with the Complainant's SKYSCANNER trademark as the mere addition of the letter "s" does not detract from the visual and phonetical identity between the trademark and the domain name.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that
- it has never licensed nor otherwise permitted the Respondent to use the SKYSCANNER mark or use domain names that incorporate or are similar to the SKYSCANNER mark;
- the term "Skyscanner" is not descriptive and has no generic meaning;
- to the best of the Complainant's knowledge, the Respondent is not commonly known as "Skyscanner";
- the services offered on the website to which the disputed domain name redirects fall within the classes of services covered by the SKYSCANNER trademark and that the Respondent is creating consumer confusion and misleadingly diverting the Complainant's customers for commercial gain.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that the Respondent was aware of Complainant's trademark at the time of registration as the word "SKYSCANNER" is solely connected with Complainant's business activities and the Respondent uses the disputed domain name for a website providing services competing with those of the Complainant.
The Complainant further argues that the Respondent has been named as "Respondent" in twenty-five UDRP complaints, all of which resulted in the transfer of the disputed domain name to the complainants and that by registering and using a domain name that is almost identical with of Complainant's SKYSCANNER marks for a website that offers services competing with those of the Complainant, the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the Complainant's SKYSCANNER trademark as to the source, sponsorship, affiliation or endorsement of the website available under the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <skyscanner.com> is confusingly similar to the Complainant's SKYSCANNER trademark.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (guiness.com); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (ansellcondoms.com); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (dixons-online.net); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (attinternet.com); British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480 (kool.com).
In this case, the disputed domain name is visually and phonetically similar to the Complainant's SKYSCANNER trademark, as the only difference between the disputed domain name and Complainant's registered SKYSCANNER trademark is the addition of the letter "s".
This difference is insufficient to distinguish the domain name from the SKYSCANNER mark (see Telfonaktiebolaget L M Ericsson (Ericsson) v. Eight Business Names, WIPO Case No. D2010-1485 (<ercisson.com>)).
Moreover, it has been long established under the UDRP case law that the specific generic Top-Level Domain ("gTLD") designation such as ".com", ".net" ".org" is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark SKYSCANNER in which Complainant has exclusive rights.
B. Rights or Legitimate Interests
The Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
"(iii) you [Respondent] are making a 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."
The Complainant has asserted that it never licensed or permitted the Respondent to use its SKYSCANNER trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by that name.
Furthermore, the evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain name is to redirect Internet users to a website providing services that compete with those of the Complainant.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Based on the record in this proceeding, the Panel is satisfied that the Complainant's SKYSCANNER mark is well known. As the disputed domain name reproduces the mark in its entirety with the mere addition of the letter "s" and is used to offer services competing with those of the Complainant, the Panel concludes that on the balance of probabilities the Respondent was aware of the Complainant's trademark at the time of registration of the disputed domain name.
The fact that the website to which the disputed domain name redirects Internet users provides services competing with those of the Complainant also demonstrates that the sole purpose of the registration and use of the disputed domain name is to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's SKYSCANNER mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location as prohibited by paragraph 4(b)(iv) of the Policy. (See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096 and Nine West Development Corporation v. Registrant /Moniker Privacy Services/Registrant : Domain Administrator, see also WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026 which confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights).
On the basis of the evidence put forward by the Complainant, the Panel is therefore satisfied that the Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(b)(iv) 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, <skysscanner.com> be transferred to the Complainant.
Date: November 28, 2017