WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Ivan, Home
Case No. D2019-0083
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom represented by Keltie LLP, United Kingdom.
The Respondent is Ivan, Home of Moscow, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <skaiscaner.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 15, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 14, 2019. 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, a company incorporated in the United Kingdom, is the owner of a travel search and price comparison website, “skyscanner.com”, hosted in various jurisdictions worldwide. The Complainant’s website currently attracts approximately 60 million visits per month and its online app has been downloaded 70 million times to date. Further, the Complainant’s services are available in over 30 languages and in 70 currencies.
The Complainant owns over 90 trademark registrations worldwide for SKYSCANNER and variations thereof, including, among others:
- International Trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006 in International Classes 35, 38 and 39; and
- European Union designation of International Trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009 in, inter alia, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, the European Union, Japan, Norway, the Russian Federation, Singapore, Turkey and the Ukraine in International Classes 35, 38, 39 and 42.
The Complainant’s trademarks will hereinafter be referred to as the SKYSCANNER Marks.
The Disputed Domain Name was registered on January 3, 2019. At that time and until January 9, 2019, the Disputed Domain Name resolved to a website claiming to provide travel information services to consumers, and displayed the Complainant’s SKYSCANNER Marks. As of the writing of this decision, the Disputed Domain Name resolves to a parking page containing pay-per-click sponsored links.
5. Parties’ Contentions
The contentions made by the Complainant are as follows:
- The Disputed Domain Name is identical or confusingly similar to service marks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Respondent registered and is using the Disputed Domain Name in bad faith; and
- The Complainant requests that the Disputed Domain Name be transferred from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
The Panel concludes that the Disputed Domain Name is confusingly similar to the SKYSCANNER Marks.
First, the Complainant is the owner of numerous trademark registrations worldwide for SKYSCANNER, including in the Russian Federation, where the Respondent resides. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the SKYSCANNER Marks.
Second, the Disputed Domain Name <skaiscaner.com> consists of a phonetic variation of the SKYSCANNER Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. The Disputed Domain Name is virtually identical in sound to the SKYSCANNER Mark, with the letters “ai” replacing the letter “y”. Domain names comprising phonetic variations of trademarks have been held to be confusingly similar. See, e.g. Xerox Corp. v. Stonybrook Investments, Ltd., WIPO Case No. D2001-0380; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123.
In addition, the Disputed Domain Name <skaiscaner> consists of a misspelling of the SKYSCANNER Mark, with the single letter “n” replaced by the letters “nn”. This is an example of typosquatting in which a domain name includes a misspelled trademark. Here, the replacement of the letters “nn” with the single letter “n” does not operate to prevent a finding of confusing similarity between the SKYSCANNER Mark and the Disputed Domain Name. See Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-1342.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Further, the Respondent does not appear to be commonly known by the name “skaiscaner” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the SKYSCANNER Marks. The Respondent does not appear to make any legitimate noncommercial or fair use of the Disputed Domain Name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears that the Disputed Domain Name was apparently used to provide advertising services relating to travel information using the SKYSCANNER Marks, which services competed with those of the Complainant. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the Disputed Domain Name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s SKYSCANNER Marks prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name years after the Complainant first used the SKYSCANNER Marks.
The Complainant’s continuous and public use of the SKYSCANNER Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). This is especially true where, as here, the Complainant owns dozens of well-known trademarks in the transportation industry in many jurisdictions worldwide. The Respondent’s initial registration and use of the Disputed Domain Name to host a transportation website using the Complainant’s well-known trademarks indicates bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests bad faith). Further, the use of the SKYSCANNER Marks to create a pay-per-click landing page with sponsored links is also evidence of bad faith.
Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website for commercial gain demonstrates registration and use in bad faith. This was the case when the Complainant drafted the Complaint and attached a screenshot of the Respondent’s website, since at that time the Disputed Domain Name resolved to a website which offered transportation services similar to those offered by the Complainant and prominently displayed the SKYSCANNER Marks. Thus, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s SKYSCANNER Marks and to drive Internet traffic seeking the Complainant’s services to the Respondent’s website for commercial gain. See paragraph 4(b)(iv) of the Policy.
Third, the Panel notes that the Disputed Domain Name is no longer redirected to the Respondent’s website as submitted in the Complaint, but instead, at the writing of this Decision, now resolves to a parking page containing pay-per-click sponsored links. When the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <skaiscaner.com> be transferred to the Complainant.
Lynda M. Braun
Date: February 16, 2019