WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Kuzmichev E Aleksandr
Case No. D2020-0422
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Kuzmichev E Aleksandr, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <skyskannerok.online> is registered with Beget LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2020. On February 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 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 February 28, 2020 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 March 4, 2020.
On February 28, 2020, the Center sent an email in English and Russian to the Parties regarding the language of the proceeding, noting that the Complaint was filed in English while the language of the Registration Agreement was Russian. On the same date, the Complainant confirmed its language request in the Complaint, requesting English to be the language of the proceeding. The Respondent has not replied regarding the language of the proceeding.
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”).
On March 2, 2020, the Respondent sent an email to the Center in the Russian language stating that the disputed domain name had never been used, would not be used, and that the [rights] holder had no need for concern. On March 3, 2020, the Center received a communication from the Respondent in the Russian language, which stated that the proceeding was not necessary because the Registrar had marked the subject domain name registration for deletion, that functionalities of the disputed domain name had been disabled, and that the disputed domain name had been removed from the Respondent’s account. The Center issued a notification in the English and Russian languages on March 4, 2020 acknowledging the above communications from the Respondent and proposing an option to suspend the proceeding for potential settlement discussions. The Complainant responded to the Center’s March 4, 2020 communication by requesting that the proceedings continue.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian language, and the proceedings commenced on April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent did not submit a formal response. On April 30, 2020, the Center informed the Parties that it will proceed to appoint a panel.
The Center appointed Clark W. Lackert as the sole panelist in this matter on May 25, 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 provider of travel and travel reservation services including promotion of third party transportation providers, facilitation of travel reservations, and providing information, search engine, and opinion polling services related to travel and third party travel service providers. The Complainant is based in the United Kingdom and trades under the corporate name Skyscanner Ltd., and it owns multiple trademark registrations for its SKYSCANNER and SKYSCANNER (with cloud design) trademarks that cover the travel services detailed above (e.g. International trademark registration no. 1030086 SKYSCANNER, registered on December 1, 2009). Records show that these trademarks have been registered in jurisdictions including the European Union, the United Kingdom, Canada, the United States of America, India, Ukraine, Armenia, Australia, Norway, the Russian Federation, Singapore, Turkey, Japan, Israel, Colombia, Switzerland, Viet Nam, Bosnia and Herzegovina, Belarus, Croatia, Serbia, Mexico, North Macedonia, Montenegro, Kazakhstan, Morocco, Kyrgyzstan, Republic of Moldova, Liechtenstein, Cuba, Monaco, and Syria. The Complainant has received publicity and third party acknowledgement for its travel services, and was recently acquired by Ctrip, one of China’s largest online travel companies, for GBP 1.4 billion in a 2016 acquisition that was widely publicized.
The disputed domain name was registered using a privacy service, however the Registrar disclosed the Respondent’s identity as Kuzmichev E Aleksandr, an individual of the Russian Federation. The disputed domain name <skyskannerok.online> was registered on January 10, 2020, and does not resolve to an active website.
5. Parties’ Contentions
The Complainant argues that the disputed domain name <skyskannerok.online> is confusingly similar to its established trademark rights in its SKYSCANNER marks because it incorporates the literal element of the Complainant’s trademarks and combines this with the letters “ok”. The Complainant has provided evidence of consumer recognition and publicity for its SKYSCANNER trademarks in the form of Internet metrics demonstrating a high volume of traffic to its “www.skyscanner.net” website (where it promotes its travel services under its SKYSCANNER marks) and reference to previous UDRP decisions that have acknowledged notoriety for the Complainant, its services, and its SKYSCANNER trademarks.
The Complainant emphasizes that its trademark rights can be traced to as early as 2006, and that these rights precede the creation of the disputed domain name in January of this year. The Complainant argues that there should be a presumption that the Respondent is aware of the Complainant and cannot demonstrate rights and legitimate interests in the disputed domain name in view of the disputed domain name’s similarity to the Complainant’s SKYSCANNER trademarks and the Complainant’s longstanding rights in its trademarks that precede creation of the disputed domain name by many years.
The Complainant asserts that the Respondent should have been aware of the Complainant when registering the disputed domain name in view of the Complainant’s registration and use of its SKYSCANNER trademarks for well over a decade and widespread publicity associated with the Complainant and its trademarks, particularly recent features on the GBP 1.4 billion acquisition of Complainant by a travel company based in China. The Complainant maintains that bad faith is present because (i) the disputed domain name is being passively used and is blocking the Complainant from registering a domain name that contains its own mark; and (ii) any use of the disputed domain name for an active website would be taking unfair advantage of Complainant’s reputation in order to attract Internet users.
The Complainant requests that the registration for the disputed domain name be transferred from the Respondent to the Complainant.
Apart from the emails mentioned above in Section 3, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Complaint has been filed in the English language and is supported with evidence that the Registration Agreement for the disputed domain name has been published in the English language. However, the Registrar’s response to the Center’s request indicated that the language of its Registration Agreement is Russian.
The Center acknowledged the language discrepancy and invited the Parties to comment on the language of the proceeding. The Complainant responded that a Russian translation should not be necessary because the disputed domain name incorporates a “deliberate misspelling” of its trademark and has been composed using English language characters and terms. Complainant also noted that the Respondent’s email address of record has been composed using the English language, and argued that the foregoing factors support a conclusion that the Respondent is familiar with the English language. The Complainant also maintained that a requirement to translate its complaint and annexes into Russian would result in a “disproportionate burden” being placed upon the Complainant.
The Panel notes that paragraph 11 of the Rules mandates that the default language of a proceeding be the language of the registration agreement for the disputed domain name(s). However, the panel has the authority to permit a proceeding to proceed in a different language as long as the case file illustrates that both parties would be treated equally and each party is provided with a fair opportunity to present its case in accordance with paragraph 10 of the Rules.
Section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses language discrepancies such as the one in this case. Importantly, section 4.5 details scenarios where proceeding in a language other than that of a registration agreement may be appropriate. Such scenarios include factors relevant to this case, including:
- Potential unfairness or unwarranted delay in ordering a translation of the complaint; and
- The language/script of the domain name, particularly where the same as that of the complainant’s mark.
The Panel notes that the Center issued all communications to the Respondent in both the English and Russian languages, and that the Respondent did not file a response to the Complaint despite having communicated with the Center during the proceeding. The Respondent has been provided with a fair opportunity to object to the language of the proceeding or request that the proceeding be conducted in Russian, however it did not do so. Such factors have been cited in prior UDRP decisions as bases for proceeding without translations in the interest of avoiding delay. See, e.g., Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack, WIPO Case No. D2015-0070 and Vokswagen AG v. Song Hai Tao, WIPO Case No. D2015-0006. See also SWX Swiss Exchange v. SWX Financial Ltd., WIPO Case No. D2008-0400 (citing that translations were not necessary because the Respondent had been provided with “ample opportunity” to raise objections or make known its (language) preference but [chose] not to do so”).
The Panel also notes that the disputed domain name <skyskannerok.online> has been composed using English language characters as well as recognizable English language terms including “sky” and “ok”.
Moreover, the Center’s initial communications that were issued solely in the English language were reviewed and replied to by the Respondent. Specifically, the Respondent confirmed in its emails of March 2, 2020, and March 3, 2020 that it understood the nature of the proceeding and its potential consequences. As examples, the Respondent’s email of March 2, 2020, claimed that the disputed domain name would never be used and that the (rights) owner (i.e., the Complainant) had no need for concern, while the Respondent’s email of March 3, 2020 claimed that a proceeding would not be necessary and represented that the disputed domain name had been deleted from its account in hopes of resolving the dispute.
Given that the record illustrates the Respondent’s understanding of the proceeding and its consequences, the Respondent’s receipt of Russian communications regarding the nature of the proceeding and associated deadlines, the Respondent’s failure to contest the language of the proceeding despite having been provided an opportunity to do so, and evidence that the Registration Agreement has been issued in both the English and Russian languages, the Panel believes that the proceeding should be permitted to proceed in English in the interest of preventing further delay. It should be noted that this proceeding has already been active for over three months and was delayed due to representations by the Registrar that the disputed domain name registration had been released and deleted.
B. Identical or Confusingly Similar
The disputed domain name <skyskannerok.online> is confusingly similar to the Complainant’s well-established SKYSCANNER trademark. It has been composed by combining (i) the term “skyskanner”, a term that is phonetically similar to the Complainant’s trademark and differs from the Complainants’ trademark by only one letter, and (ii) the term “ok”, an English language expression that does not add distinction and has been dismissed by a majority of prior UDRP panels as either descriptive or a dictionary term (see, e.g., F. Hoffman-La Roche AG v. Domain Administrator, See PrivacyGurardian.org and Dmitry Petroff, WIPO Case No. D2015-0997, observing that “ok” was descriptive and added no distinction to the use of the SWAROVSKI trademark in the <swarovskiok.com> domain name). See also Torgovy dom Edyl v. Anton Baranov, WIPO Case No. D2006-0612 (observing that the suffix “ok” was “not an identifier of sufficient distinctiveness to avoid confusion” with the HOLOD trademark as presented in the <holodok.info> domain name).
Finally, it should be noted that minor misspellings of a trademark such as that adopted by the disputed domain name in this case (i.e., “skyskanner”) does not prevent a finding of confusing similarity. This has been held in prior UDRP decisions concerning similar misspellings of the Complainant’s SKYSCANNER trademark (see, e.g., Skyscanner Limited v. Nguyen van Lu, WIPO Case No. D2020-0672 concerning the <scyscanner.com> domain name). See also section 1.9 of WIPO Overview 3.0 which notes that “[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” and prior UDRP decisions that have branded such misspellings of trademarks as purposeful efforts to create confusion (see, e.g., Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 regarding <wochovia.com> and the WACHOVIA trademark). The misspelling in this case involves substitution of the letter “k” for the letter “c” in the Complainant’s SKYSCANNER mark; the hard pronunciations of the English letters “c” and “k” result in a term that mimics the composition and pronunciation of the Complainant’s mark. Thus, the letters “c” and “k” as used in this manner are almost interchangeable.
The Panel holds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The record contains no evidence showing that the Respondent has relevant trademark rights in the disputed domain name, has become commonly known by the disputed domain name, or has provided any legitimate goods or services under the disputed domain name.
Based on the Complainant’s contentions mentioned above, the Panel finds that the Complainant has made its prima facie case, and that the Respondent has not rebutted the Complainant’s contentions. The requirements of Paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
The SKYSCANNER trademark of the Complainant is a distinctive mark that has been extensively publicized for over a decade. The Complainant’s strong rights in its SKYSCANNER trademark have been acknowledged by prior UDRP panels including Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481 (acknowledging that the SKYSCANNER trademark is “widely known in the travel and tourism industry”); and Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Fundacion Comercio Electronico, Carolina Rodrigues, WIPO Case No. D2019-2466 (observing that the Complainant’s SKYSCANNER trademarks have “received a great deal of exposure in the international media”). Prior UDRP decisions demonstrate that the Complainant has been a target of multiple third party registrations that have been composed by adopting a misspelling of its SKYSCANNER trademark such as <skyscannerer.com>, <sskyscanner.net>, and <skyscannert.net>, and that such decisions have held that these misspelled domain names were registered in bad faith due to the Complainant’s reputation and likelihood that the named respondents must have or should have been aware of the Complainant’s longstanding trademark rights in its SKYSCANNER mark at the time of registration. See Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Fundacion Comercio Electronico, Carolina Rodrigues, WIPO Case No. D2019-2466, Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-2974, and Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0423. The Panel sees no reason to hold differently here, particularly in view of no formal response or defenses having been raised by the Respondent in this case. Section 3.2.1 of WIPO Overview 3.0 supports a finding of bad faith registration because the disputed domain name <skyskannerok.online> is a “typo of a widely-known mark”, moreover it contains sufficiently recognizable aspects of the Complainant’s SKYSCANNER trademark, and such a misspelling signals an intention by the Respondent to confuse users seeking or expecting the Complainant and its services provided under the SKYSCANNER trademark that was adopted and registered by the Complainant more than a decade before the disputed domain name was created.
There is no record of the disputed domain name having featured any active content, however absence of content does not prevent a finding of bad faith use. Prior UDRP panels such as the one in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and multiple decisions cited in section 3.3 of WIPO Overview 3.0 have maintained that passive holding of a domain name can constitute bad faith use. Specifically, passive holding constitutes bad faith use when combined with activities present in this case, namely the composition of this disputed domain name which has been composed by mimicking the distinctive SKYSCANNER trademark, the Respondent’s failure to file a response to the Complaint, and the Respondent’s effort to conceal its identity by registering the domain name through a privacy service. While the latter point can be legitimized by privacy concerns, the masking of contact details in this case supports an inference of bad faith due to the other factors that are present. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696. These include the factors detailed above and evidence indicating that the Respondent actively avoided service of the Written Notice of the Complaint by avoiding delivery and ignoring multiple requests to collect the courier package dispatched by the Center. The foregoing evidence of bad faith has not been contested by the Respondent. In contrast, the Respondent acknowledged the potential for bad faith in its communication to the Center dated March 2, 2020.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <skyskannerok.online> be transferred to the Complainant.
Clark W. Lackert
Date: June 8, 2020