WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-3100

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <zskyscanner.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 December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 23, 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 amendment to the Complaint on December 30, 2019.

The Center verified that the Complaint together with the amendment to 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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2020.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on January 29, 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

At the time of the current Complaint, as declared by the Complainant, the website “www.skyscanner.net” attracts 100 million visits per month and, to date, its Skyscanner smart device app has been downloaded over 70 million times.

The Complainant is the owner of several trademark registrations (about 91) containing the term SKYSCANNER in numerous jurisdictions around the world, including:

- International Trademark, designating among others the United States, for SKYSCANNER Registration No. 1133058, registered on August 16, 2012;
- Trademark filed in India for SKYSCANNER Registration No. 1890840, registered on September 20, 2010;
- Trademark filed in United Kingdom for SKYSCANNER Registration No. UK00002313916, registered on April 30, 2004;
- Trademark filed in Canada for SKYSCANNER Registration No. TMA786689, registered on January 10, 2011.

The disputed domain name utilized by the Respondent is an identical reproduction of the Complainant’s trademark, except that the Respondent has added the letter “z” at the beginning of the Complainant’s trademark.

The disputed domain name was registered on November 22, 2019. In its Complaint, the Complainant provided evidence that the website associated with the disputed domain name points to a parking page containing pay-per-click (“PPC”) links to competitors of the Complainant, whom offer advertising travel arrangement services.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the only element of difference between the disputed domain name and the Complainant’s trademark is the letter “z” used in the disputed domain name. This little element can mislead Internet users, due to the fact that the disputed domain name is virtually-identical to the Complainant’s trademark.

Thus, the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed 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; 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.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The Complainant has shown it owns trademark rights in the SKYSCANNER trademark.

The disputed domain name <zskyscanner.com> is confusingly similar to the Complainant’s trademark SKYSCANNER. The disputed domain name adds the letter “z” at the beginning of the Complainant’s trade mark, which is not sufficient to render the visual or phonetic characteristics of the disputed domain name distinct from the Complainant’s rights.

The addition of such a letter does not prevent finding a confusing similarity between the disputed domain name and the Complainant’s trademark. See Skyscanner Limited v. Domain Admin, Whois Privacy Corp, WIPO Case No. D2019-2881.

In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the product under its trademarks for several years.

The first element of the Policy has, therefore, been met.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks.

The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name.

The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permission, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s SKYSCANNER trademark.

The Complainant has provided evidence that the website associated with the disputed domain name points to a parking page containing PPC links to competitors of the Complainant, whom offer advertising travel arrangement services.

The Respondent’s current use of the disputed domain name to resolve to a website featuring third party PPC links is intended both to disrupt the Complainant’s business, and to attempt to attract, by fraudulent means, visitors to the website to which the disputed domain name points by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, for the purposes of commercial gain. In any event the Respondent’s present use of the disputed domain name provides no evidence of registration or use in good faith. See Mecenat Aktiebolag v. C/O Alpnames Limited / Edouard, WIPO Case No. D2018-1366.

The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. On the record, the Panel therefore finds that the Complaint fulfills the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The fact that the disputed domain name is being used only to attract traffic to its website and encourage them to access the PPC links displayed, thereby generating revenue for the Respondent, is a strong indication that the Respondent’s intentions for the disputed domain name are also not well-meaning.

Furthermore, the Complainant submits that the Respondent acquired the disputed domain name primarily to sell it to the Complainant or to a competitor of the Complainant, for valuable consideration of USD 899.00.

On the basis of the above, the Panel finds that the Respondent registered the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks and domain names (Policy, paragraph 4(b)(iv)).

Accordingly, this Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent.

On this basis, the Panel finds that the Complainant has satisfied the third element of the Policy (paragraph 4(a)(iii)).

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 <zskyscanner.com> be transferred to the Complainant.

Eva Fiammenghi
Sole Panelist
Date: February 12, 2020