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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. PRIVACYDOTLINK CUSTOMER 2626171 / Jon Jones

Case No. D2019-1843

1. The Parties

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

The Respondent is PRIVACYDOTLINK CUSTOMER 2626171, Cayman Islands / Jon Jones, China.

2. The Domain Name and Registrar

The disputed domain name <skyscaner.net> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On August 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2019, 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 2, 2019, 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 2, 2019.

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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on September 4, 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 founded its business in 2003 and operates an Internet-based airline fare aggregation business through its <skyscanner> domain names and in particular at “www.skyscanner.net”. It owns 91 trade mark registrations worldwide for its SKYSCANNER trade mark, including the European Union designation of International Trade Mark Registration No. 900393 registered on March 3, 2006, and United Kingdom Trade Mark Registration No. 2313916 registered on April 30, 2004.

The disputed domain name was first registered on September 17, 2004, and has passed through various owners until the Registrant details were transferred into the Respondent’s name in approximately October 2016, as evidenced by the Complainant (Annexes 1 and 5 of the Complaint). Following the engagement of the privacy service, the disputed domain name has been re-directed to several websites having originally been registered by a third party who had used it to point to several businesses in competition with the Complainant, in particular, Hawaiian Airlines and Hotels.com.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its SKYSCANNER trade mark as noted above and that the part of the disputed domain name before the Top-Level Domain root “.net” only differs from its SKYSCANNER trade mark by the omission of a letter “n”. This, according to the Complainant, is not sufficient to distinguish the disputed domain name and, as a result, it is confusingly similar to the Complainant’s SKYSCANNER trade mark.

The Complainant says that, so far as it is aware, the Respondent does not own any registered rights in any trade marks for SKYSCANNER, the Complainant has never consented to the Respondent’s use of the SKYSCANNER mark, the Respondent is not commonly known by the “skyscanner” name or mark and the SKYSCANNER mark is not a generic or commonly-used dictionary term. In addition, it says that the disputed domain name essentially is automatically diverted to the website of the Complainant’s competitor, Hotels.com. It says that there is no evidence that the Respondent has ever made any demonstrable preparations to use the disputed domain name for legitimate purposes or in relation to a bona fide offering of goods or services.

The Complainant submits that it is Europe’s largest travel fare aggregator and travel metasearch engine and that itswebsite at “www.skyscanner.net” now attracts 80 million visits per month and that its smart device application has been downloaded 70 million times. It says that, even seven years ago, it was noted by a panel in a previous UDRP case that the Complainant’s website enjoyed 30 million visits per month (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983). Considering this degree of renown, the Complainant says that it is likely that the Respondent was aware of the Complainant’s rights prior to acquisition of the disputed domain name in late 2016. This is even more the case after the international media exposure concerning the Complainant’s acquisition by Ctrip, China’s largest on-line travel agency.

The Complainant says that it is inevitable that visitors to the disputed domain name would mistakenly believe there to be an association with the Complainant. It submits that the use of the disputed domain name, which is virtually identical to the Complainant’s mark, to attempt to attract Internet users to its website and to re-direct Internet users to a competitor’s website, by creating a likelihood of confusion with the Complainant’s trade mark, cannot constitute a legitimate interest or a bona fide use of the disputed domain name, and amounts to registration and use in bad faith. In addition, the Complainant submits that the disputed domain name is being used as a blocking registration to prevent the Complainant from using a domain name that is virtually identical to its mark, and says that the privacy shield is being used by the Respondent to shield it from identification in UDRP proceedings and that the failure of the Respondent to respond to the Complainant’s concerns points to registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns numerous registered trade mark rights for its SKYSCANNER mark, including the European Union designation of International Trade Mark Registration number 900393 registered on March 3, 2006, and United Kingdom trade mark registration number 2313916, registered on April 30, 2004. The only difference between the main element of the disputed domain name (not including the “.net” generic Top-Level Domain) and these marks is the omission of a letter “n”. This does not prevent a finding of confusing similarity and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SKYSCANNER trade mark and accordingly that the Complainant succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent does not own any registered rights in any trade marks for SKYSCANNER and that it has never consented to the Respondent’s use of the SKYSCANNER mark. The Complainant also asserts that the Respondent is not commonly known by the “skyscanner” name or mark and that the SKYSCANNER mark is not a generic or commonly used dictionary term. The Complainant notes that the disputed domain name automatically redirects Internet users to a website which belongs to a competitor, Hotels.com. The Complainant has further submitted that there is no evidence that the Respondent has ever made any demonstrable preparations to use the disputed domain name for its own legitimate purposes or in relation to a bona fide offering of goods or services offered by the Respondent.

The Respondent has not rebutted this prima facie case that it has no rights or legitimate interests in the disputed domain name and for that reason and also considering the evidence of bad faith discussed under Part C below, the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name. As a result, the Complainant also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name appears, according to the Complainant, to have been acquired by the Respondent in October 2016, which submission has not been challenged by the Respondent. The Complainant’s contention is that prior to that time it had been registered by at least one third party who had used it to point to several businesses in competition with the Complainant, including, Hawaiian Airlines and Hotels.com. By 2016, the Complainant had been using its SKYSCANNER mark for many years and since at least 2004 which was also the year of one of its earliest trade mark registrations, the United Kingdom trade mark registration, with numerous other trade mark registrations to follow in the succeeding years. The evidence, as noted in a previous UDRP decision (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983), suggests that the Complainant had developed a very substantial following of 30 million views per month for its websites by 2012. Therefore, the Panel infers that by the date of the Respondent’s acquisition of the disputed domain name in 2016, the Complainant’s SKYSCANNER mark had developed a substantial reputation with Internet users, and it is more likely than not that the Respondent was aware of the Complainant’s mark when it acquired the disputed domain name in late 2016 and that it did so purposefully with knowledge. In any event, the Complainant’s trade mark registered in the UK predates the disputed domain name’s registration in September 2004.

Under paragraph 4(b)(iv) of the Policy, using a domain name intentionally for commercial gain to attract Internet users to a 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 the respondent’s website or location or of a product or service on the respondent’s website or location, is evidence of registration and use of a disputed domain name in bad faith. In this case the Respondent has used the disputed domain name, which is virtually identical to the Complainant’s mark, to attempt to attract Internet users to the “www.hotels.com” website, by creating a likelihood of confusion with the Complainant’s trade mark. The Panel accepts the Complainant’s submission that this amounts to re-direction to a competitor’s website, which is more than likely for the commercial gain of the Respondent. This amounts to evidence under paragraph 4(b)(iv) that the disputed domain name had been registered and used in bad faith and the Panel’s view of the Respondent’s conduct in this regard is only reinforced by the Respondent’s use of a privacy service to mask its real identity and the unchallenged assertion by the Complainant that the disputed domain name was previously used to re-direct to competitor websites.

As a result, the Panel finds that the Complainant has registered and used the disputed domain name in bad faith and that the Complaint succeeds under this element 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.net>, be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 15, 2019

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