WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Khaled Samir
Case No. D2020-2669
1. The Parties
Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Khaled Samir, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <skyscanners.online> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 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 Complainant on October 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to its Complaint on October 16, 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 Respondent of the Complaint, and the proceedings commenced on October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2020.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 17, 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
Complainant is the proprietor of the following trade marks:
- International Trade Mark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006 for the following classes:
Class 35: “Advertising services provided via the Internet, opinion polling, data processing, provision of business information, business information services, namely data feeds, auctioneering; all relating to travel”;
Class 38: “Providing access to a search engine relating to travel”; and
Class 39: “Travel information and arrangement services provided from an Internet website; providing information via means of a global computer network in relation to travel; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology”.
- International Trade Mark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009 and designating registered trade mark protection in Armenia, Australia, Azerbaijan, Bosnia & Herzegovina, Belarus, European Union, Switzerland, China, Japan, Norway, Russian Federation, Singapore, Turkey and the Ukraine for the following services:
Class 35: “Advertising services provided via the Internet, opinion polling, data processing, provision of business information, data feeds, auctioneering, all relating to travel” in Class 35;
Class 39: “Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilizing wireless application protocol technology”; and
Class 42: “Operating of a search engine relating to travel”.
Complainant owns 187 trade mark registrations containing the term “Skyscanner”. Among Complainant’s trade mark registrations are the following:
- United States designation of International Trade Mark Registration No. 1133058 for SKYSCANNER and Cloud device, registered on August 16, 2012;
- Indian Trade Mark Registration No. 1890840 for SKYSCANNER, registered on December 2, 2009;
- Indian Trade Mark Application No. 2287020 for SKYSCANNER & Cloud Device, registered on February 22, 2012;
- United Kingdom Trade Mark Registration No. 2313916 for SKYSCANNER, registered on April 30, 2004;
- Canadian Trade Mark Registration No. TMA786689 for SKYSCANNER, registered on January 10, 2011; and
- New Zealand Trade Mark Registration No. 816550 for SKYSCANNER, registered on October 7, 2020;
The Domain Name was registered on June 7, 2020. The Domain Name resolves to a parking page displaying pay-per-click links advertising travel arrangement services referring to Complainant’s competitors.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that previous UDRP panels have held in several previous decisions that Complainant has exclusive rights in the term SKYSCANNER (e.g., Skyscanner Limited v. Ali Karatas, Fast Line (UK) Ltd, WIPO Case No. D2016-0176; Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983 and Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481).
Complainant supports its Complaint by quoting the following comments of the panel in Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983:
“The Complainant has proved to the Panel’s satisfaction that it enjoys exclusive rights to the trade mark SKYSCANNER in connection with its business, and 30 million visits per month to its “Skyscanner” websites constitutes, in the Panel’s opinion, compelling evidence that its SKYSCANNER trade mark enjoys considerable reputation.
At the time of the current Complaint, the Skyscanner website www.skyscanner.net attracts 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 thirty languages and in seventy currencies. Further, as of 12th November 2019 the Complainant’s website www.skyscanner.net was ranked 1,671st globally for internet traffic and engagement and 107th in the United Kingdom.
Screenshots of (a) the Complainant’s website and (b) the internet traffic and engagement website Alexa.com confirming these facts is attached at Annex 3. Therefore, the Complainant submits that it enjoys a global reputation in its SKYSCANNER trade mark.
The Domain Name is virtually identical to the Complainant’s SKYSCANNER trade mark, the only difference being that the Domain Name includes a letter ‘s’ at the end of the Complainant’s trade mark. This difference is not sufficient to render the Domain Name distinct from the Complainant’s Rights. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“gTLD”).”
(ii) Rights or legitimate interests
Complainant states that as far as it is aware, Respondent does not own any registered rights in any trade marks that comprise part or the entirety of the Domain Name. Complainant states that the term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. It is highly distinctive in the context of services offered by Complainant under its SKYSCANNER mark. Therefore, there is no cause for any party other than Complainant to use SKYSCANNER as a trade mark in the course of business.
Complainant has not given its consent for Respondent to use its registered trade mark in a domain name or in any other manner. To the best of Complainant’s knowledge, Respondent is not commonly known as “skyscanners”. However, even if Respondent does refer to itself by this name, Complainant submits that Respondent’s use of this name constitutes bad faith insofar as Respondent’s interest cannot be legitimate nor is there a bona fide use of the Domain Name under the Policy.
Complainant has submitted evidence that the Domain Name points to a parking page containing PPC links advertising travel arrangement services provided by Complainant’s competitors. There is no evidence that Respondent has made demonstrable preparations to use the Domain Name, nor is there any evidence that Respondent is using the Domain Name in connection with a bona fide offering of goods and services.
Complainant contends that given the famous nature of its SKYSCANNER mark and the fact that no other individual or business owns rights (whether registered or unregistered) in the mark, not only is it highly likely that Respondent was aware of Complainant’s rights prior to acquiring or registering the Domain Name, but it is also inevitable that visitors to the Domain Name would mistakenly believe there to be an association with Complainant.
Complainant submits that it has submitted a prima facie case showing Respondent has no rights or legitimate interests in respect of the Domain Name. Whilst the burden of proof initially lies with Complainant, that burden is a shifting one such that now falls on Respondent to rebut Complainant’s prima facie showing. In the absence of a Response or assertion that any such right or interest exists, this must lead to a presumption that Respondent is unable to show that such right or interest exists.
(iii) Registered and used in bad faith
Complainant states that paragraph 4(b) of the Policy sets out, without limitation, certain circumstances which, if found are deemed to be evidence of use and registration in bad faith. It is to be observed that whilst paragraph 4(a)(iii) requires a showing of both registration and use in bad faith, paragraph 4(b) appears not to distinguish between registration and use. Nevertheless, Complainant submits that Respondent registered the Domain Name in bad faith and uses the Domain Name in bad faith.
The Domain Name was registered on June 7, 2020, 18 years after Complainant first applied to register its SKYSCANNER trade mark. Complainant submits that Respondent registered the Domain Name in the knowledge of Complainant’s trade mark rights. By June 7, 2020, Complainant enjoyed a global reputation in its SKYSCANNER mark, following 18 years of aggressive international growth. Complainant’s mark also enjoyed a great deal of exposure in the international media in November 2016, after Complainant was acquired by “Ctrip”, China’s largest on-line travel agency in a deal worth approximately GBP1.4 billion.
Complainant submits that, on the balance of probability, it can be no coincidence that Respondent chose to register a Domain Name that replicates Complainant’s distinctive trade mark. Thus, Respondent registered the Domain Name in bad faith.
The Domain Name is also used in bad faith inasmuch as it is used as a blocking registration to prevent Complainant from using a domain name that is virtually identical to its trade marks for legitimate commercial purposes. Complainant submits that the circumstances surrounding registration and use of the Domain Name are similar to those in Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs. K Ananthan, WIPO Case No. D2019-0988, where the panelist made the following comments:
“The Panel considers the following circumstances to be relevant:
(1) The Complainant has registered its SkyScanner and SKYSCANNER marks in many countries around the world.
(2) It transacts an enormous volume of business by reference to those marks.
(3) It has received considerable publicity by reference to its corporate name over the years.
(4) The disputed domain name is confusingly similar to the Complainant’s marks.
(5) Any use of that name anywhere in the world is likely to be actionable.
(6) The Second Respondent has taken some steps to conceal her identity by using the First Respondent’s privacy service.
(7) The Respondents have been shown the Complainant’s case and allowed an opportunity to answer it but have failed to do so.”
The overwhelming likelihood is that the Respondent registered the disputed domain name to make money from it. The actual way in which she would have done so is not clear. She may have intendedto sell the disputed domain name to the Complainant, a competitor or a critic. Alternatively, she may have intended to set up her own flight fare aggregator. None of that matters. The fact is that she registered and retained a domain name that she could not use lawfully. That of itself amounts to registration and use in bad faith”.
Complainant states it is logical that if 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 Complainant’s mark. Complainant submits that there is a realistic and serious threat posed by Respondent’s continued ownership of the Domain Name, not least the threat of a diversion of custom and the inevitable damage to the reputation Complainant enjoys in its SKYSCANNER trade mark. However, as it stands Respondent benefits financially by riding on the coattails of Complainant’s reputation in its mark.
Complainant urges that UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Therefore, in the absence of a response from Respondent, Complainant submits that, on the balance of probability, Respondent has registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its well-known SKYSCANNER trade mark, based on its trade mark registrations and widespread use of the mark.
Further, the Panel determines that the Domain Name is virtually identical to Complainant’s SKYSCANNER trade mark, the only difference being that the Domain Name includes the letter “s” at the end of Complainant’s mark. This difference is not sufficient to render the Domain Name distinct from Complainant’s trade mark. See Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983.
The generic Top Level Domain (“gTLD”) “.online” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trade mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its SKYSCANNER trade mark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to resolve to a landing webpage with links that purport to redirect Internet users to services competitive with Complainant. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. Section 3.1 of the WIPO Overview 3.0 states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its SKYSCANNER mark, and intentionally targeted that mark, when it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SKYSCANNER trade mark in its entirety, with the addition of the letter “s”, 18 years after Complainant first applied to register its SKYSCANNER mark. Given the fame of the SKYSCANNER trade mark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SKYSCANNER trade mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, (…) its very use by someone with no connection with the products suggests opportunistic bad faith”).
This point is further confirmed by Respondent’s use of the Domain Name in connection with a parking page containing pay-per-click (“PPC”) links advertising travel arrangement services provided by Complainant’s competitors. As section 3.5 of the WIPO Overview 3.0 states that “Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests.”
Further, to the extent Respondent is engaged in passive holding, section 3.3 of the WIPO Overview 3.0, starts that “passive holding” or non-use of a domain name may support a finding of bad faith. In particular,
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Here, all four of these factors apply – the distinctiveness and reputation of the SKYSCANNER mark has been established by Complainant. Respondent failed to respond to the Complaint or provide any evidence of good faith use. Respondent used a privacy service to conceal its identity. Finally, it is completely implausible that Respondent could use the Domain Name <skyscanners.online> in good faith.
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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, <skyscanners.online>, be transferred to Complainant.
Christopher S. Gibson
Date: December 7, 2020