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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Privacy Protect, LLC (PrivacyProtect.org) / Pakeliani Z Zaxarij, Company - OOO SPARTA

Case No. D2020-0110

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America (“US”) / Pakeliani Z Zaxarij, Company - OOO SPARTA, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyscannerr.online> (the “Disputed Domain Name”) is registered with Beget LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2020, 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 January 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 21, 2020, the Center sent an email in English and Russian regarding the language of the proceedings. On January 23, 2020, the Complainant requested English to be the language of the proceedings. On January 24, 2020, the Complainant by email confirmed adding the true registrant details to the Complaint. The Respondent has not replied on the language of the proceedings.

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 February 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2020.

The Center appointed Mariya Koval as the sole panelist in this matter on March 16, 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

The Complainant, being founded in 2004, is an online travel company based in Edinburgh, Scotland. The Complainant’s services are available in over thirty languages and in seventy currencies. Further, according to the evidences presented by the Complainant (Annex 3 to the Complaint) as of November 12, 2019, the Complainant’s website “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the United Kingdom. Currently, the Complainant’s website 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 numerous SKYSCANNER trademark registrations (the “SKYSCANNER Trademark”), including the following relevant ones:

- International Registration No. 900393, registered on March 3, 2006, in respect of services in classes 35, 38, 39;

- International Registration No. 1030086, registered on December 1, 2009, in respect of services in classes 35, 39, 42;

- International Registration No. 1133058, registered on August 16, 2012, in respect of services in classes 35, 39, 42;

- United Kingdom Registration No. 2313916, registered on April 30, 2004 in respect of services in classes 35, 38, 39;

- Canadian Registration No. TMA786689 registered on January 10, 2011, in respect of services in classes 35, 38, 39.

Since 2002, the Complainant operates, domain name <skyscanner.net> reflecting its SKYSCANNER Trademark for rendering and promotion of its services.

The Disputed Domain Name was registered on December 14, 2019. At the date of this decision, the Disputed Domain Name resolves to a parking page, which displays sponsored link related to flights reservation services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is virtually identical to the Complainant’s SKYSCANNER Trademark. The Disputed Domain Name adds the letter ‘r’ at the end of the Complainant’s Trademark that is not sufficient to render the visual or phonetic characteristics of the Disputed Domain Name distinct from the Complainant’s Trademark. The Complainant submits that the Disputed Domain Name is a deliberate misspelling of the Complainant’s Trademark and that the Disputed Domain Name remains visually, aurally and conceptually identical with the Complainant’s SKYSCANNER Trademark.

The Complainant alleges that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name in view of, so far as the Complainant is aware, the Respondent does not own any registered rights in any trademarks which comprise part or the entirety of the Disputed Domain Name. The Complainant highlights that the term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. In fact, it is highly distinctive in the context of the services that the Complainant offers under its SKYSCANNER Trademark. Therefore, there is no cause for any party other than the Complainant to use SKYSCANNER as a Trademark in the course of business.

The Complainant asserts that it has not given its consent for the Respondent to use its registered SKYSCANNER Trademark in a domain name registration (or in any other manner). The Complainant also submits that to its best knowledge the Respondent is not commonly known by the name “Skyscannerr”.

The Complainant also contends that given the famous nature of the Complainant’s SKYSCANNER Trademark and the fact that no other individual or business owns rights (whether registered or unregistered) in its Trademark, it is highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the Disputed Domain Name and it is also inevitable that visitors to the Disputed Domain Name would mistakenly believe there to be an association with the Complainant.

The Complainant further submits that the Respondent registered the Disputed Domain Name in the knowledge of the Complainant’s SKYSCANNER Trademark. Before the Disputed Domain Name was registered, the Complainant had enjoyed a global reputation in its SKYSCANNER Trademark, following sixteen years of intensive international growth.

The Complainant also asserts that it can be no coincidence that the Respondent chose to register the Disputed Domain Name that replicates the Complainant’s distinctive Trademark. Thus, it is submitted that the Respondent registered the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith.

6.1. Language of Proceedings

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

In accordance with the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. At the same time, this paragraph empowers the Panel to determine the language of the proceeding having regard to all the circumstances of the administrative proceeding.

The Complainant submitted the Complaint in English and also requested that English be the language of the administrative proceedings on the grounds that:

1) the Respondent has provided WHOIS contact details in English;

2) purports to be based in the United States of America (where English is the primary language);

3) the Disputed Domain Name is displayed in English characters;

4) the website under the Disputed Domain Name contains the English words “Skyscanner: Compare Cheap Flights, Hotels & Car Hire, Cheap Airline Tickets”.

The Complainant is the United Kingdom company where English is a national language. The Complainant’s representative is also the United Kingdom company. Accordingly, neither the Complainant nor its representative are able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.

Also, the Respondent was duly informed about this proceeding by the Center’s communications in English and Russian, but he did not make any submission with respect to the language of proceeding.

The Disputed Domain Name and generic Top-Level-Domain (“gTLD”),both are in Latin characters and not Cyrilic characters. Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence of registered SKYSCANNER Trademark rights in different jurisdictions. The Complainant’s Trademark rights date back to 2003, while the Disputed Domain Name was registered on December 14, 2019.

The Disputed Domain Name reproduces the SKYSCANNER Trademark in its entirety with adding of additional letter “r” combining with the gTLD “.online”. As it is well accepted, the gTLD does nothing for distinguishing the Disputed Domain Name from the Complainant’s SKYSCANNER Trademark for the purposes of the Policy. Moreover, the Disputed Domain Name appears to be a typical example of typosquatting, i.e. a misspelling of the Complainant’s SKYSCANNER Trademark. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel finds that addition of one letter “r” in this case is insufficient to distinguish the Disputed Domain Name from the Complainant’s Trademark.

In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than sixteen years after the SKYSCANNER Trademark had been registered. Moreover, the Panel finds that the Respondent is not commonly known by the Disputed Domain Name and it has not received a license, authorization or consent from the Complainant to register or to make use of the SKYSCANNER Trademark.

The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name resolves to a parking page, which displays sponsored link related to flights reservation services. Such commercial use by the Respondent cannot be considered as bona fide offering goods and services. According to section 2.9 of the WIPO Overview 3.0 UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click (“PPC”) links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. In view of this the Panel finds that the Respondent has registered the Disputed Domain Name to use and to get a benefit from the Complainant’s SKYSCANNER Trademark’s goodwill by increasing his PPC revenues, that cannot by any means be considered as a right or legitimate interest in the Disputed Domain Name.

Moreover, taking into consideration the notoriety of the Complainant’s SKYSCANNER Trademark, the Panel is of an opinion that the Respondent could not to be unaware of existing of the Complainant’s Trademark at the moment of registration of the Disputed Domain Name.

The Respondent did not respond to the Complaint and did not participate in this proceeding, accordingly, the Respondent has failed to present any evidence to support any rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In light of the above, the second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:

“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.”

Taking into account that the Disputed Domain Name contains the Complainant’s SKYSCANNER Trademark in its entirety (with addition of the letter “r”), the Panel finds that it is very unlikely that the Respondent chose the Disputed Domain Name accidentally, having been unaware of the Complainant’s SKYSCANNER Trademark.

According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and was obviously registered to attract, for commercial gain, the Internet users to the website under it by creating a likelihood of confusion with the Complainant’s Trademark and business.

Furthermore, in accordance with section 3.6. of the WIPO Overview 3.0 there are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. The Panel considers that, taking into account all circumstances of this case the Panel considers that the Respondent’s use of privacy service constitutes an inference of bad faith registration and use of the Disputed Domain Name.

Having examined all circumstances of this proceeding and in the absence of any explanation from the Respondent, the Panel also finds that it is obvious that the Respondent has registered and has used the Disputed Domain Name for the only purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s SKYSCANNER Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the services offered on it. Entering the website under the Disputed Domain Name, Internet users will most likely consider that the Disputed Domain Name refers to the one of the Complainant’s website where the Complainant offers the special flight reservation services.

Accordingly, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and that the Complainant has met the requirements of paragraph 4(a)(iii) 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 <skyscannerr.online> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: March 30, 2020

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