WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Super Privacy Service LTD c/o Dynadot
Case No. D2020-0676
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <scyscanner.net> is registered with Dynadot, LLC (the “Registrar”), hereinafter also referred to as the “Domain Name”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 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 April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2020.
The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on May 6, 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 provides evidence of its trademark rights throughout the world including:
(i) International Trademark Registration designating the European Union and the United States, number 900393 for SKYSCANNER, registered on March 3, 2006 for services in classes 35, 38 and 39 for inter alia: providing access to a search engine relating to travel, providing online travel information and arrangement services and travel information via a mobile phone.
(ii) International Trademark Registration designating the European Union, number 1030086 for SKYSCANNER, registered on December 1, 2009, for services in classes 35, 39 and 42 for inter alia; providing advertising services via the Internet, travel information and arrangement services, and operation of a search engine related to travel.
(iii) International Trademark Registration designating registered trademark protection in multiple jurisdictions, number 1030086, for SKYSCANNER, registered on December 1, 2009 for services in classes 35, 39 and 42 as in (ii) above.
(iv) United Kingdom trade mark registration UK00002313916, for SKYSCANNER, registered on April 30, 2004 for services in classes 35, 38 and 39 as in (i) above.
In total, the Complainant owns ninety-one trademark registrations containing the term “skyscanner” including in the United States, India, United Kingdom, Canada and New Zealand.
These trademarks will hereinafter also be referred to as the “Trademark” in singular.
The Complainant also relies upon previous UDRP decisions, in particular:
Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983, in which the UDRP Panel held that the Complainant enjoys exclusive rights in the mark SKYSCANNER which when used in connection with its business and 30 million visits per month to its website constituted “compelling evidence that its SKYSCANNER trademark enjoys considerable reputation among potential customers”.
The Domain Name, <scyscanner.net>, was first registered on September 10, 2005. The date of registration by the Respondent is at some point between May 4, 2011 and June 20, 2011.
The Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant, founded in 2003, is a leading global air-ticketing specialist. The Complainant provides customers with expertise in traveling strategies. The Complainant operates various websites containing the SKYSCANNER mark, including the website at ‘‘www.skyscanner.net’’ attracting 100 million visits per month and, to date, its ‘‘Skyscanner’’ smart device app has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies.
The Complainant submits that it owns registered trademark rights for its SKYSCANNER mark, as set out above in section 4 of this decision. The Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name is a typo-squatting inasmuch as the Domain Name consists of the Complainant’s trademark with the mere substitution of the letter “c” in place of the letter “k”.
The Complainant further submits that the substitution of the letter “c” in place of the letter “k” is clearly insufficient to differentiate the Domain Name in question from the SKYSCANNER mark in which the Complainant enjoys rights and a considerable reputation. The Complainant alleges that the Domain Name is an intentionally misspelling of the Complainant’s trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use a confusingly similar variation of its trademark. According to the Complainant, the Domain Name does not resolve to an active website, but points to various third party websites on an apparently rotational cycle. Furthermore, the Respondent has not made demonstrable preparations to use the Domain name and the Respondent is not using the Domain Name to make a bona fide offering of goods or services.
The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith. The Complainant submits that the Respondent should have been aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the Domain Name was acquired by the Respondent, by which stage the Complainant already enjoyed global fame in its trademarks. According to the Complainant, the Respondent’s registration of the Domain Name constitutes a classic case of typo-squatting. It is submitted that the overwhelming likelihood is that the Respondent chose to register the Domain Name in order to mislead consumers as to an affiliation with or connection to the Complainant, for commercial gain.
The Complainant further submits that if the Respondent does point the Domain Name to an active website in the future, such use can only be designed to take unfair advantage of the reputation in the Complainant’s rights. The Complainant submits that there is a realistic and serious threat posed by the Respondent’s continued ownership of the Domain Name, not least the threat of a diversion of custom and the inevitable damage to the reputation that the Complainant enjoys in its SKYSCANNER trademark.
According to the Complainant, the Respondent’s use of a privacy service is designed to shield the Respondent from its identification in the UDRP proceeding. The Complainant acknowledges that the use of a privacy service does not, in isolation, constitute use in bad faith. However, should the Registrar and the Respondent fail to respond to the Complainant’s legitimate concerns, namely, this UDRP complaint, this will be another factor which points to the Respondent’s bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and the Rules.
Paragraph 4(a) of the Policy lists the three elements that the Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
A comparison between the Domain Name and the Trademark shows that the Domain Name is almost identical to the Trademark except that the Domain Name consists of the Trademark with the mere substitution of the letter “c” in place of the letter “k”, which misspells the Trademark.
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Domain Name that misspells the Trademark owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark.
Based on the undisputed submission provided by the Complainant the Domain Name redirected to third-party websites and it does not resolve to an active website. In any case, the Panel notes that the Domain Name consists on a typo of the Complainant’s Trademark, and neither the dynamic redirection claimed by the Complainant nor the passive holding of the Domain Name would amount to a bona fide offering of goods or services nor a legitimate noncommercial nor fair use of the Domain Name. The Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No Response to the Complaint was filed and the Respondent has not rebutted the Complainant’s prima facie case.
On this basis, the Panel considers that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent has not established evidence of any rights or legitimate interests in the Domain Name. The Complainant deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Domain Name in bad faith. Considering the fame of the Complainant’s trademark the Panel finds that the Respondent knew or should have known of the Complainant’s rights. This is also suggested by the Respondent’s choice of registration, namely of a term which obviously corresponds to a misspelling of the Complaint’s trademark. The Domain Name clearly targets the Complainant’s Trademark, because it misspells the Trademark and does not have any other meaning. Consequently, the choice of the Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark. The Panel notes that the current non-use of the Domain Name would not prevent a finding of bad faith under the doctrine of passive holding.
On this basis, the Panel finds that the Complainant has established an unrebutted case that the Respondent registered and used the Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
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.net> be transferred to the Complainant.
Richard C.K. van Oerle
Date: May 19, 2020