WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Chun Yuan Jiang, JIANGCHUNYUAN
Case No. D2018-1741
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Keltie LLP, United Kingdom.
The Respondent is Chun Yuan Jiang, JIANGCHUNYUAN of Nanchang, Jiangxi, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <skyscaner.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2018, 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 August 7, 2018 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 August 10, 2018.
On August 7, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 10, 2018, the Complainant confirmed its request that English be the language of the proceeding. On August 11, 2018, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Respondent sent a communication to the Center on August 16, 2018, again requesting that Chinese be the language of the proceedings, but did not file a formal Response. On September 5, 2018, the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Joseph Simone as the sole panelist in this matter on September 12, 2018. 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, Skyscanner Limited, operates a travel search website founded in 2001, which compares prices of various airlines and online travel agents for flights, hotels and car hire. It owns 91 trademarks containing the term "skyscanner". They include:
- United Kingdom Trademark Registration No. 00002313916, registered on April 30, 2004, covering advertising and services related to travel in classes 35, 38 and 39;
- International Trademark SKYSCANNER Registration No. 0900393, registered on March 3, 2006, covering advertising and services related to travel in classes 35, 38 and 39;
- International Trademark SKYSCANNER Registration No. 1030086, registered on December 1, 2009, covering advertising and services related to travel in classes 35, 39 and 42.
The disputed domain name <skyscaner.com> was registered on February 23, 2005. It was transferred several times. Evidence provided by the Complainant suggested that the disputed domain name was acquired by the Respondent after January 24, 2014. It currently resolves to a website containing links to various travel services such as flight search, status, bookings and airline ticket prices.
5. Parties' Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark SKYSCANNER in which it has rights. The Complainant therein submits evidence of various trademark registrations for SKYSCANNER. The Complainant also refers to a previous UDRP decision involving the Complainant in which the panel held that it enjoyed "considerable reputation" in the trademark SKYSCANNER in connection with its business (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983). The Complainant submits that the disputed domain name is virtually identical to the Complainant's trademark and despite the addition of the letter "n", it is pronounced in an identical manner to the Complainant's trademark.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complainant has not given consent to the use of its registered trademark as a domain name. The Complainant submits that the disputed domain name resolves to a parked page of links to services which are protected by its trademark registrations, and it is inevitable that Internet users would mistakenly believe there to be an association with the Complainant. Therefore, this is not a bona fide offering of goods or services.
Registered and used in bad faith
The Complainant submits that the Respondent acquired the disputed domain name in bad faith. Since the Complainant's registered rights date back to 2002, and at the time of the Respondent's acquisition, it had enjoyed international success, the Complainant submits that the Respondent was aware of the Complainant's business under the SKYSCANNER trademark prior to acquisition.
The Complainant submits that the Respondent is also using the disputed domain name in bad faith, as it resolves to a parked page of seemingly innocuous links to services protected by the Complainant's trademark, and that the site in fact contains malware which could be used to steal personal data of consumers visiting the site.
Finally, the Complainant submits evidence of a reverse WhoIs search to demonstrate the Respondent has engaged in a pattern of bad faith registration.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of Proceeding
In accordance with paragraph 11 of the Rules:
"…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."
Given the foregoing, prima facie, the language of the proceeding should be Chinese. However, the Complainant filed the Complaint in English and has requested that English be the language of the proceeding based on the assertion that the disputed domain name and the website to which it resolves are in English, thus indicating the Respondent has a working knowledge of English. In these circumstances, requiring the Complainant to translate its Complaint and its annexes would be a disproportionate burden.
The Respondent meanwhile submitted that it does not know English and requests Chinese be the language of proceedings. The Respondent also claimed that to avoid malicious use of arbitration to plunder domain names, it requires translation of the Complaint in order to respond, failing which the dispute should be resolved through court proceedings.
Noting the aim of conducting proceedings with due expedition while also ensuring that each party is given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement. The Panel has considered the submissions of the Parties and believes that despite the Respondent's submissions otherwise, it does in fact understand English. This is both because the language of the website to which the disputed domain name resolves is English and because the Respondent has been involved in two prior disputes where the Panel decided that the Respondent was proficient in the English language and wrote the decisions in English (Tumblr, Inc. v. WHOIS Agent, Domain WhoIs Protection Service / jiangchunyuan, WIPO Case No. D2014-1132; Tumblr, Inc. v. Privacy Protect.org / jiangchunyuan, WIPO Case No. D2013-0243). Notably, in one case the registration agreement was in English and the Respondent responded to the Center in English. Therefore, the Panel in this proceeding shall also proceed in English.
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. The Panel is satisfied that the Complainant has adequately demonstrated its rights in the mark SKYSCANNER by virtue of its trademark registrations, extensive online presence and previous UDRP panels which have found the same.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the Top-Level Domain ".com" may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <skyscaner.com > is obviously recognizable as SKYSCANNER. Merely omitting an 'n' is an intentional misspelling of the Complainant's trademark characterized as typo-squatting and the resulting word is confusingly similar visually and phonetically to the Complainant's trademark.
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant's mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent's rights or legitimate interests in the disputed domain name. The Panel accepts that there is no relationship between the Complainant and Respondent that would give rise to authorization to use the trademark in the disputed domain name nor is there anything to suggest the Respondent is commonly known by the disputed domain name. The use of the disputed domain name to mimic the real Skyscanner website by offering travel services protected by the trademark and in fact containing malware is clearly not a bona fide or legitimate use within the meaning of paragraph 4(c) of the Policy.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
A complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In assessing bad faith, one relevant factor is whether the Respondent "knew or should have known" of the Complainant's trademark rights, which is a strong inference for bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). The fame of the Complainant and its trademark is obvious from the results of a web search against "skyscanner" using Google. The first two pages of search results all relate to the Complainant and include evidence that the Complainant's website attracts between 60 and 80 million users per month. Given the Complainant's reputation in the travel industry and the fact that the disputed domain name resolves to a website offering travel services, the Respondent was clearly aware of the Complainant's rights when it acquired the disputed domain name.
Furthermore, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention in particular to subparagraph (iv):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
After being alerted by a Twitter user that the "typo domain squatter skyscaner dot com" was offering malware, the Complainant conducted three scans by different websites which check for viruses and malicious code, and all three identified a malicious file contained on the site connected to the disputed domain name. The similarity of the disputed domain name to the Complainant's legitimate domain name at "www.skyscanner.com" means there is a real risk that Internet users will be deceived into thinking the website to which the disputed domain name resolves is the actual Skyscanner website. Alternatively, Internet users may simply mis-type the Complainant's domain name and arrive at the Respondent's website. The Respondent relied on this confusion with a view to commercial gain from the personal information that could be stolen from visitors to its website.
Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.
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.com> be transferred to the Complainant.
Date: September 18, 2018