WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Nguyễn Văn Lư
Case No. D2020-0672
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Nguyễn Văn Lư, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <scyscanner.com> (“Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 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 amended Complaint on April 6, 2020.
On April 2, 2020, the Center sent a communication to the Parties, in English and Vietnamese, regarding the language of the proceeding. On April 6, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment.
The Center verified that the Complaint together with the amended 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, in English and Vietnamese, of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 7, 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
Founded in 2003, the Complainant operates a travel search website at “www.skyscanner.net” (the “Complainant’s Website”) which offering discounted flights, hotel bookings and car rentals. The Complainant also offers a mobile app, which has been downloaded 70 million times. The Complainant’s services are available in 70 countries in 30 languages. The Complainant’s Website attracts 100 million visits per month, being ranked 1,671th globally for Internet traffic and engagement.
The Complainant holds a number of registered trade marks consisting of SKYSCANNER (the “SKYSCANNER Mark”) including International registration number 900393 registered on March 3, 2006 for travel, information and advertising services in classes 35, 38 and 39, and United Kingdom registration number 2313916 registered on April 30, 2004 for travel, information and advertising services in classes 35, 38 and 39.
The Domain Name <scyscanner.com> was created on September 2, 2005. However, the evidence in the Complaint is that the Respondent acquired the Domain Name at some point between September 4, 2019 and March 9, 2020. The Panel notes that the Complainant’s evidence is that between February 26, 2010 and March 9, 2020 the Domain Name was held by various privacy services, so it may be the case that the Domain Name was acquired by the Respondent between February 26, 2010 and March 9, 2020, however this does not affect the outcome of the decision.
The Domain Name redirects to a website (the “Respondent’s Website”) that offers sponsored listings (often referred to as pay-per-click advertisements) relating to the hotel and travel industry including a pay-per-click advertisement that refers directly to the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SKYSCANNER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SKYSCANNER Mark having registered the SKYSCANNER Mark in the European Union and around the world. The Domain Name is a common and obvious misspelling of the SKYSCANNER Mark, since it replaces the letter “k” with “c” and hence is confusingly similar the SKYSCANNER Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the SKYSCANNER Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page with various links to the Complainant’s competitors; which does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. Given the reputation of the SKYSCANNER Mark, the acquisition of the Domain Name can only be taken as an attempt by the Respondent to falsely create an impression of an association with the Complainant. There is no reasonable or meaningful use of the Domain Name that can be made. Rather, the Respondent is using the Domain Name for a pay-per-click site, which amounts to bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
In the present case, the language of the registration agreement for the Domain Name is Vietnamese.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant, upon receiving a notification that the language of the registration agreement for the Domain Name was Vietnamese from the Center, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
“Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.
Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel’s ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.”
In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs; see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. The Panel has noted that the content of the Respondent’s Website is provided in English, the Domain Name itself contains one English word and that the Respondent has been the named Respondent in two other proceedings under the Policy that involved English language websites and were conducted in English. These cases are Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No. D2019-2596 and Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO Case No. D2019-3064.
Given these facts it would appear that the Respondent is familiar with the English language and it would be appropriate to continue these proceedings in that language. Furthermore, the Respondent has been given a fair opportunity to object to the Complainant’s choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally.
6.2. Substantive Issues
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SKYSCANNER Mark, having registrations for the SKYSCANNER Mark in the European Union and other countries.
Disregarding for the purposes of comparison the generic Top-Level Domain (“gTLD”) “.com” (being a technical requirement for the registration of a domain name) the Domain Name consists of a misspelling of the SKYSCANNER Mark, replacing the letter “k” with the letter “c”. The Panel finds that this minor misspelling does not prevent a finding of confusing similarity between the SKYSCANNER Mark and the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s SKYSCANNER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SKYSCANNER Mark or a mark similar to the SKYSCANNER Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links related to the Complainant’s travel services does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the SKYSCANNER Mark at the time the Respondent acquired the Domain Name. The SKYSCANNER Mark consists of a coined word that at all relevant times after February 26, 2010 held a considerable international reputation. Furthermore, the SKYSCANNER Mark was registered and used from at least 2004, prior to the registration of the Domain Name. The Respondent has provided no explanation, and none is immediately obvious, why an entity would acquire a domain name containing a minor misspelling of the SKYSCANNER mark and redirect it to a website containing links relating to travel sites (including one referring to the Complainant) unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its SKYSCANNER Mark. In these circumstances, the Respondent’s conduct in acquiring the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website offers what appear to be pay-per-click links to competitor websites with at least one of these links directly referring to the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SKYSCANNER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <scyscanner.com> be transferred to the Complainant.
Date: May 15, 2020