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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. WhoisGuard, Inc. / Julia Kitsune

Case No. D2020-2652

1. The Parties

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

The Respondent is WhoisGuard, Inc., Panama / Julia Kitsune, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyscaner.live> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 12, 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 October 23, 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 October 23, 2020.

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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2020.

The Center appointed Mariya Koval as the sole panelist in this matter on November 26, 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 2003, is an online travel company based in Edinburgh, Scotland, United Kingdom. The Complainant’s services are available in over 30 languages and in 70 currencies. Further, according to the evidences presented by the Complainant (Annex 3 to the Complaint), the Complainant’s website “www.skyscanner.net” attracts 80 million visits per month and, to date, its SKYSCANNER smart device application 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:

- United Kingdom Registration No. 00002313916, registered on April 30, 2004 in respect of services in International classes 35, 38, 39;
- International Registration No. 900393, registered on March 3, 2006, in respect of services in International classes 35, 38, 39;
- International Registration No. 1030086, registered on December 1, 2009, in respect of services in International classes 35, 39, 42;
- Canadian Registration No. TMA786689 registered on January 10, 2011, in respect of services in International classes 35, 38, 39;
- International Registration No. 1133058, registered on August 16, 2012, in respect of services in International classes 35, 39, 42.

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

The Disputed Domain Name was registered on August 3, 2020. At the date of this decision, the Disputed Domain Name does not resolve to any active website. However, according to the evidence presented by the Complainant (Annexes 4a and 4b to the Complaint), the Disputed Domain Name previously resolved to a website where online flight booking services were offered. The Respondent appeared to be engaged in fraudulent phishing scheme for selling non-existent flights to unsuspecting consumers (Annex 4c to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is virtually identical to the Complainant’s famous SKYSCANNER Trademark; the only difference being that the Disputed Domain Name omits a letter ‘n’ from its trademark.

The Complainant alleges that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. The Complainant has not given its consent for the Respondent to use a highly similar variation of its registered trademark in the Disputed Domain Name. To the best of the Complainant’s knowledge the Respondent is not commonly known as “Skyscaner”. However, even if the Respondent does refer to herself by that name, the Complainant submits that the Respondent’s use of this name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the Disputed Domain Name (under the Policy). Indeed, the Complainant presents evidence demonstrating that the Disputed Domain Name is used fraudulently inasmuch as the Respondent is posing as the Complainant to attract consumers and sell flights that do not exist.

The Complainant further submits that the Respondent used the Disputed Domain Name to pose as the Complainant with the aim of defrauding consumers. Such use cannot constitute a legitimate interest or a bona fide use of the Disputed Domain Name. Also, given the famous nature of the Complainant’s trademark and the fact that no other individual or business owns rights (whether registered or unregistered) in the SKYSCANNER Trademark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to registration of the Disputed Domain Name but it is inevitable that visitors to the website under the Disputed Domain Name would mistakenly believe there to be association with the Complainant. Indeed, Annex 4 to the Complaint demonstrates that actual deception has taken place on the Disputed Domain Name.

The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith in view of upon registration the Disputed Domain Name was set up to commit business identity fraud, by posing as the Complainant’s business to sell non-existent flights to unsuspecting consumers. The Complainant submits that the Respondent’s use of the Disputed Domain Name is a flagrant attempt to make illicit profit off the back of the Complainant’s reputation by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant also submits that the Respondent registered the Disputed Domain Name in the knowledge of the Complainant’s rights. Not only had the Complainant been operating for 18 years by the time the Disputed Domain Name was registered, but it had been the subject of international media exposure in November 2016 after the Complainant was acquired by Ctrip, China’s largest online travel agency in a deal worth approximately GBP 1.4 billion.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a 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 the 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.

A. Identical or Confusingly Similar

The Complainant has properly asserted its rights in the SKYSCANNER Trademark due to the long use and number of registrations globally. The Complainant has submitted sufficient evidence of registered SKYSCANNER Trademark rights in different jurisdictions. The Complainant’s trademark rights date back to 2004, while the Disputed Domain Name was registered in 2020.

The Disputed Domain Name reproduces the SKYSCANNER Trademark in its entirety with omission of one letter “n” combining with the generic Top-Level Domain (“gTLD”) “.live”. 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 omission of one letter “n" 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

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant has continuously and extensively used its SCYSCANNER Trademark since 2004 in connection with online travel services, having acquired considerable goodwill and renown worldwide.

Moreover, the Panel finds that the Respondent is not commonly known by the Disputed Domain Name and it has not received any 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 previously resolved to a website where booking services for flights that did not exist had been offered. Consequently, the Respondent was using the Disputed Domain Name for impersonating the Complainant to defraud the Internet users. According to section 2.13.1 of the WIPO Overview 3.0 UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. In view of this the Panel finds that the Respondent has registered the Disputed Domain Name to use and to get a benefit from goodwill associated with the Complainant’s SKYSCANNER Trademark’s by receiving profits for selling tickets related to non-existent flights. The Panel cannot consider such use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use.

Moreover, taking into consideration the notoriety of the Complainant’s SKYSCANNER Trademark and the way in which the Respondent previously used the Disputed Domain Name, the Panel is of an opinion that the Respondent was well aware 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.

In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of a 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.”

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.

Moreover, the Respondent was also using the Disputed Domain Name to intentionally attract Internet users to her website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. Impersonating the Complainant by use of the Complainant’s trademark, nature of offered services on the website under the Disputed Domain Name and participation in a fraudulent phishing scheme, namely sale of non-existent flights, clearly cannot be considered as use in good faith by the Respondent.

In the Panel’s opinion, the fact that the Respondent knew about the Complainant’s trademark at the time of the registration of the Disputed Domain Name is undisputable in view of the Disputed Domain Name was used to attract Internet users who misspelled the Complainant’s trademark to the Respondent’s website with the same services offered. Entering the website under the Disputed Domain Name, Internet users were sure that the Disputed Domain Name referred to one of the Complainant’s websites where the Complainant offered special flight booking services and transferred their money to the fraudulent bank accounts. Moreover, the current non-use of the Disputed Domain Name would not prevent a finding of bad faith in this case.

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 Respondent’s use of privacy service constitutes an inference of bad faith registration and use of the Disputed Domain Name.

Finally, the Respondent did not reply to the Complainant’s contentions and did not take any actions for justification of her registration and use of the Disputed Domain Name.

In light of the above, the Panel concludes that the Disputed Domain Name was registered and has been used in bad faith.

In all the circumstances the Panel is satisfied that the Complainant has established both bad faith registration and bad faith use 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 <skyscaner.live> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 11, 2020

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