WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Mohan Pillai
Case No. D2019-0690
1. The Parties
The Complainant is Skyscanner Limited of London, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Mohan Pillai of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <skyscanner-flights.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. On April 9, 2019, the Complainant filed a supplemental filing. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Alfred Meijboom as the sole panelist in this matter on May 8, 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 is owner of 91 trademark registrations containing the term “skyscanner”, including International trademark registrations No. 900393 and 1030086 for SKYSCANNER, registered on March 3, 2006, and December 1, 2009, respectively, and Indian trademark registration No. 1890840 for SKYSCANNER, registered on December 2, 2009 (the “SKYSCANNER trademark”). All mentioned trademarks were registered for, inter alia, advertising services relating to travel, and providing travel information and arrangement services. The Complainant’s website at “www.skyscanner.net” attracts 80 million visits per month and, its “Skyscanner” device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies.
The Respondent registered the disputed domain name on March 8, 2019. The disputed domain name automatically redirected to a website that supplied travel arrangement services, tours and the provision of information thereof against payment.
5. Parties’ Contentions
The Complainant asserted that the three elements of the paragraphs 4(a) of the Policy were all met for the following reasons:
According to the Complainant, the disputed domain name is confusingly similar to the SKYSCANNER trademark because it takes the SKYSCANNER trademark its entirety, while the additional term “flights” describes a method of travel for which the Complainant’s arrangement and information services under its SKYSCANNER trademark are famous.
The Complainant further alleged that the Respondent has no rights or legitimate interest in respect of the disputed domain name because the Respondent does not own any rights in any trademarks which comprise part or all of the disputed domain name, and is not commonly known as “Skyscanner” or “Skyscanner Flights”; the Complainant has not given its consent for the Respondent to use a variation of the SKYSCANNER trademark in a domain name; there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor can the use of the disputed domain name to direct consumers to a website offering services in direct competition with the Complainant constitute a legitimate interest or a bona fide use of the disputed domain name.
According to the Complainant, the disputed domain name was also registered and used in bad faith. The Complainant asserts that the Respondent must have been aware of the SKYSCANNER trademark at the moment of registration of the disputed domain name as the Complainant already secured registration for the SKYSCANNER trademark in India eight years before, and upon registration the disputed domain name was pointed to a website that offered travel arrangement services in direct competition with the Complainant and displayed a trademark that is virtually identical to the SKYSCANNER trademark. The Complainant contends that it can be no coincidence that the Respondent chose to register a domain name that is highly similar to the SKYSCANNER trademark, not only because of the virtually identical nature of the domain name, but because within days of registration the Respondent chose to trade off the Complainant’s reputation in the SKYSCANNER trademark by directing consumers to a website offering travel arrangement services. To that end, the Complainant submits that the disputed domain name was registered and used in bad faith inasmuch as the Respondent’s use of the disputed domain name was designed to create a likelihood of confusion with the SYSCANNER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. According to the Complainant, such use can only be designed to take unfair advantage of the reputation in the SKYSCANNER trademark.
The Respondent did not reply to the Complainant’s contentions. However, on April 30, 2019 (the day following the due date for filing the Response), the Respondent sent an email to the Center stating “We already removed domain from our server. Please check that not exist anymore. Now, We are not using that domain.”
6. Discussion and Findings
A. Preliminary Matter: The Supplemental filings
On March 27, 2019, the Complaint was filed, and on April 9, 2019, the Center notified the Respondent about the dispute and informed the Respondent it could file a Response until April 29, 2019. Just before the Center’s notification, and also on April 9, 2019, the Complainant’s counsel sent an email to the Center and to the Respondent stating that the Respondent has been acting illegally in connection to the disputed domain name by selling a consumer a flight ticket which was not confirmed, although payment was made. The consumer subsequently filed a complaint with the Complainant’s help desk allegedly believing that it did business with the Complainant, submitting a copy of an invoice from the Respondent which showed an address in the United Kingdom which is nearly identical to the registered address of the Complainant on its website at “https://www.skyscanner.net/media/company-details”, as well as the Complainant’s widely used trademark and registered logo. The consumer filed its complaint with the Complainant’s help desk on April 3, 2019.
Apart from copying the Center in the Complainant’s counsel email of April 9, 2019, the Complainant did neither offer an explanation for the email nor filed a request to include said email in the file. The Panel considers the email as an unsolicited supplemental filing and needs to decide if it is admissible.
Further, the Respondent’s email of April 30, 2019, as quoted above under 5.B should be regarded as an unsolicited supplemental filing which admissibility needs to be decided.
In previous UDRP cases it has been decided that panels as an exception may accept unsolicited supplemental submissions under paragraph 10(a) of the Rules, which provides the panels with a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules. Whether it is appropriate to submit a supplemental submission will depend on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see, e.g., NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984). Unsolicited supplemental submissions are not be used to simply reply to the Respondent's arguments (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The Complainant’s supplemental filing showed that the Complainant only became aware of the Respondent’s allegedly fraudulent acts a week after the Complaint was filed. In the Panelist’s opinion, the Complainant could not have anticipated on the consumer’s complaint. As the Respondent’s alleged fraudulent acts are relevant to the case, while the Respondent had ample opportunity to respond to the email in its Response, the Panel finds the Complainant’s supplemental filing admissible.
The Respondent’s supplemental filing is merely a factual statement that it gave up the use of the disputed domain name. The statement is not relevant to decide this matter and could have been filed earlier. Consequently, the Panel decides that it is not admissible and shall be ignored.
B. Substantive Matters
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domain (“gTLD”) “.com” should typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the SKYSCANNER trademark. The Respondent has taken the SKYSCANNER trademark in its entirety, and added the descriptive word “flights” at the end of the disputed domain name, separating the SKYSCANNER trademark and additional term by a hyphen. The hyphen and added term do not prevent the disputed domain name to be confusingly similar to the Trademark.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use the SKYSCANNER trademark or to register the disputed domain name, the Respondent has not been commonly known by the disputed domain name, the Respondent has no rights or legitimate interests in the disputed domain name, and the disputed domain name resolved to a website that intentionally created confusion as to the source, sponsorship, affiliation or endorsement of such website. As the Respondent’s use of the disputed domain name misleadingly created an association with the Complainant for commercial gain, there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain names in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the SKYSCANNER Trademark in mind, as the Complainant secured registration for the trademark more than eight years before in India, and the SKYSCANNER Trademark has been used for many years worldwide, whereas the Respondent immediately upon registration of the disputed domain name redirected the disputed domain name to a website offering services which competed with the Complainant’s services and mimicked the SKYSCANNER Trademark.
Further, the evidence of the Respondent’s use of the disputed domain name to offer visitors of the associated website flight tickets with huge discounts, confusing such Internet users into believing that they were dealing with the Complainant, was not rebutted by the Respondent. Therefore, the Panel considers the Complainant’s supplemental filing as clear evidence of the Respondent’s use of the disputed domain name to the detriment of the Complainant and the SKYSCANNER Trademark, and accordingly as use in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <skyscanner-flights.com> be transferred to the Complainant.
Date: May 22, 2019