WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2019-2974
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <sskyscanner.net> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.
The Center appointed Phillip V. Marano as the sole panelist in this matter on January 14, 2020. 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
Complainant is an online travel company in London, United Kingdom that provides a search engine and price comparison website at <skyscanner.net> and <skyscanner.com> (collectively, the “Skyscanner Websites”) where users can search hundreds of airlines, hotel, car rental and travel agency websites in one place. Complainant owns valid and subsisting registrations for the SKYSCANNER trademark in numerous geographic regions and countries, including in the European Union, with the earliest priority dating back to March 3, 2006.
Respondent registered the disputed domain name on April 7, 2010. At the time of filing this Complaint, the disputed domain name automatically redirected to Complainant’s Skyscanner websites.
5. Parties’ Contentions
Complainant asserts ownership of the SKYSCANNER trademark and has adduced evidence of numerous trademark registrations in countries and regions around the world, including the European Union, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Canada, China, India, Japan, Norway, Russian Federation, Singapore, Switzerland, Turkey, Ukraine and the United States of America. Complainant asserts that the Skyscanner websites attract more than 100 million visits per month and, its smart device app has been downloaded over 70 million times. The disputed domain name is virtually identical to Complainant’s SKYSCANNER trademark, according to Complainant, because it merely adds a letter “s” at the beginning of the disputed domain name.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: Respondent’s lack of any registered trademark rights in the term “Skyscanner”; the lack of any generic meaning for the term Skyscanner; Respondent’s mere redirection of the disputed domain name to Complainant’s Skyscanner websites; the famous nature of Complainant’s SKYSCANNER trademark; and the lack of any evidence that Respondent is known by the name “Skyscanner”.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the global reputation of Complainant’s SKYSCANNER trademark when Respondent registered the disputed domain name plus the absence of any plausible legitimate uses of the disputed domain name; Respondent’s use of the disputed domain name to redirect to Complainant’s Skyscanner websites misrepresenting to consumers that the disputed domain name is affiliated with, or connected to, Complainant; and a pattern of bad faith conduct established by 25 prior UDRP panel determinations against Respondent all resulting in domain name transfer.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the SKYSCANNER trademark has been registered internationally with earliest priority dating back to March 3, 2006 in the European Union, over four years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the SKYSCANNER trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s SKYSCANNER trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s SKYSCANNER trademark because, disregarding the “.net” Top-Level Domain (“TLD”), that trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). TLDs, such as “.net” in the disputed domain name, are generally viewed a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 .
Furthermore, it is well established that domain names which consist of common, obvious or intentional misspellings of trademarks are considered to be confusingly similar for the purposes of the first element of the Policy. WIPO Overview 3.0, section 1.9 (“Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters … (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”). See e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic … In fact, the domain name comprises the Complainant’s trademark … with a single misspelling of an element of the mark: a double consonant ‘S’ at the end”). The disputed domain name in this Complaint clearly comprises Complainant’s SKYSCANNER trademark, and is nearly identical to the <skyscanner.net> domain name for Complainant’s Skyscanner websites, with a double consonant “s” misspelling at the beginning. Accordingly, the disputed domain name clearly constitutes an attempt at typosquatting by Respondent.
In view of Complainant’s widespread registration for the SKYSCANNER trademark, and Respondent’s clear attempt at typosquatting on the SKYSCANNER trademark, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0 , section 2.1.
It is evident that Respondent, identified by registration data for the disputed domain name as “Domain Administrator”, is not commonly known by the disputed domain name or Complainant’s SKYSCANNER trademark. Moreover, from the record in this case, it is evident that Respondent was, and is, aware of Complainant and its trademark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to Complainant’s own Skyscanner websites. Use of the disputed domain name to redirect Internet users to Complainant’s own Skyscanner websites cannot confer any rights or legitimate interests in the disputed domain name to Respondent. See, e.g., Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 (“Furthermore, panels have found that unauthorized redirection to Complainant’s website does not serve as evidence of rights or legitimate interests. Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533.”).
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent redirecting the disputed domain name to Complainant’s Skyscanner websites, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
(i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to either a complainant’s or a competitor’s website is strong evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … redirecting the domain name to the complainant’s (or a competitor’s) website….”). A respondent redirecting a domain name to a complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625. See also The Sportsman’s Guide, Inc. v. JoyRide, WIPO Case No. D2003-0153 (“The registration and use of domain names which the Respondent had reason to know were confusingly similar to the Complainant’s trademark, in order to divert the Complainant’s would-be customers down a route that would trigger a commission for the Respondent, was manifestly below the standards of acceptable commercial behavior. Such use was in bad faith, notwithstanding the fact that the re-routed visitors probably never knew that they had not reached the Complainant’s site directly”).
The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights also serves as strong evidence of bad faith registration. WIPO Overview, Section 3.2.1 (Particular circumstances panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”); see also Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting” itself is evidence of the bad faith registration of a domain name). The Panel agrees with this approach. It is evident that Respondent registered and used the disputed domain name to typosquat on the SKYSCANNER trademark and intentionally attract, for commercial gain, Internet users to Complainant’s Skyscanner website in a manner that confuses and misleads Internet users. Thus, the Panel infers Respondent’s bad faith based on the fact that the Respondent is trying to gain profit of mistakes such as typographical errors made by Internet users, when inputting the misspelling “sskyscanner” instead of Complainant’s SKYSCANNER trademark for Complainant’s “www.skyscanner.net” website URL into a web browser.
In view of Respondent’s typosquatting on Complainant’s SKYSCANNER trademark and Respondent’s redirection of the disputed domain name to Complainant’s website, the Panel concludes that Complainant has established the third element 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 <sskyscanner.net> be transferred to Complainant.
Phillip V. Marano
Date: February 4, 2020