WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd.
Case No. D2020-0272
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd., Panama.
2. The Domain Name and Registrar
The disputed domain name <skyscannee.net> (“Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 7, 2020, 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 February 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 19, 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 is a United Kingdom based company founded in 2001, which operates a business providing online flight search and price comparison services receiving 100 million visits per month. In November 2016, the Complainant announced that it was acquired by China’s largest online travel agency, Ctrip, for approximately GBP 1.4 billion. The Complainant holds 91 registrations for the trademark SKYSCANNER and variations of it in numerous countries, including, for example, United Kingdom registration No. 2313916 in classes 35, 38 and 39, registered on April 30, 2004.
The Complainant owns numerous domain names that comprise of, or contain, the trademark SKYSCANNER, including the domain names <skyscanner.com> and <skyscanner.net>.
The Respondent registered the Disputed Domain Name on November 17, 2016. The Disputed Domain Name resolves to a pay-per-click (“PPC”) parking page that includes links to competing products and services.
5. Parties’ Contentions
The Complainant cites various trademark registrations including International Registration No. 1030086 registered in 2009 in 37 countries and numerous other registrations around the world, for the mark SKYSCANNER as prima facie evidence of ownership.
The Complainant submits that the mark SKYSCANNER is widely-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the SKYSCANNER trademark and that the similarity is not removed the replacement of the letter “r” at the end of the Complainant’s trademark with the letter “e”, or the addition of the generic Top-Level Domain (“gTLD”) “.net”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it “resolves to a parking page with pay-per click (PPC) links related to [the] Complainant’s field of activities”, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and widely known character of the Complainant’s trademark and for offering the Disputed Domain Name registration for sale to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of pocket costs directly related to the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SKYSCANNER in numerous countries including, pursuant to United Kingdom registration No. 2313916 in classes 35, 38 and 39, registered on April 30, 2004. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the SKYSCANNER trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark SKYSCANNER; (b) with the letter “r” at the end of the Complainant’s trademark replaced by the letter “e”; (c) followed by the gTLD “.net”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “skyscannee”.
The Disputed Domain Name differs solely from the Complainant’s trademark by the replacement of the letter “r” at the end of the trademark with the letter “e” has been held by numerous previous UDRP panels as able to amount to confusing similarity with a Complainant’s trademark (see American Online Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495 (“the mere addition of a minor misspelling […] does not create a new or different mark in which the Respondent has rights. Instead it results in a domain name that is confusingly similar to the Complainant’s mark”); Dollar Bank, Federal Savings Bank v. Pham Dinh Nhut, WIPO Case No. D2016-0787; Comerica Bank v. Katherine Mary, WIPO Case No. D2014-1056).
This Panel accepts the Complainant’s contention that the misspelling of the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark and is therefore confusingly similar to the Complainant’s trademark.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a PPC landing web page dominated by links advertising supposed “Fly-Scanner – All Deals On Fly-Scanner.Com”, and directing Internet traffic to the websites of two other competitors of the Complainant, thereby illegitimately using the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
In the absence of a response, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s widely-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark SKYSCANNER is a widely-known mark for travel search and travel price comparison services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Skyscanner Limited v. Domain May Be For Sale, Check afternic.com Domain Admin / Hulmiho Ukolen, WIPO Case No. D2017-1946(“the Panel is satisfied that the Complainant’s SKYSCANNER mark is well known”); Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2707 (“The Panel accepts the Complainant’s travel business and its SKYSCANNER mark are globally recognised”); Skyscanner Limited v. Domain Admin, Privacy Protect LLC / Jonny Rios, WIPO Case No. D2019-3126 (“the SKYSCANNER trademark which is reproduced entirely in the disputed domain name is well known”)).
The Panel notes that the Respondent registered the Disputed Domain Name in the same month that the Complainant announced that it had sold its business for GBP 1.4 billion, then subsequently offered it for sale on the open market, in this case for USD 2,695. That part of the Complainant’s case also relies on the provisions of paragraph 4(b)(i) of the Policy, namely that there are circumstances indicating that the Respondent registered the Disputed Domain Name with intent to sell it to the Complainant or a competitor for an amount in excess of its out-of-pocket costs. In order to succeed, the Complainant would be required to show that trademark rights were being specifically targeted or singled out by the Respondent. This Panel infers from the contemporaneous announcement of the business sale and the Respondent’s offering for sale of the Disputed Domain Name, and the adjacency of the letters “e” and “r” on a QWERTY keyboard, that the Respondent must have had the Complainant in mind when it registered the Disputed Domain Name.
Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 12 years after the Complainant established registered trademark rights in the SKYSCANNER mark.
On the issue of use, the evidence is that the Disputed Domain Name resolved to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate typing of the correct domain name. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Lilly ICOS LLC v. The Counsel Group LLC, WIPO Case No. D2005-0042; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel has also considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same registrant (see Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
The Disputed Domain Name offers no plausible dictionary word value or any other possible use, which would not necessarily conflict with the Complainant’s rights and the letters “e” and “r” are adjacent on a QWERTY keyboard increasing the risk of a typographical error and inference of opportunistic typosquatting. Also, the Respondent seeks to capitalize on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain and hid behind a privacy service to promote competing goods or services to those protected under a complainant’s established trademark rights. This Panel regards such conduct as evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <skyscannee.net> be transferred to the Complainant.
Date: March 27, 2020