WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Oleg Zasel

Case No. D2020-3278

1. The Parties

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

The Respondent is Oleg Zasel, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <sky-scanner.xyz> is registered with Registrar of Domain Names REG.RU, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 17, 2020 detailing the different registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant responded to the Center by email that same day by acknowledging the registrant and contact information disclosed by the Registrar and agreeing to the proposed amendment reflecting the registrant and contact information as verified by the Registrar.

In addition to disclosing different registrant and contact information associated with the disputed domain name, the Registrar email of December 4, 2020 also confirmed that the language of the registration agreement for the disputed domain name is Russian. The Center sent an email to the Complainant on December 17, 2020 advising that the language of the Complaint was not consistent with the language of the registration agreement for the disputed domain name and inviting the Complainant to respond by (i) submitting evidence of an agreement between the parties to use English for the proceeding; (ii) providing a Russian translation of its Complaint; or (iii) furnishing arguments and evidence to support use of English in the proceeding. The Complainant responded by email on that same day with a request that the Center conduct the proceeding in English and providing supporting reasons (discussed below). The Center issued all relevant communications, including its Notification of Complaint to the Respondent, in both English and Russian.

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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2021

The Center appointed Clark W. Lackert as the sole panelist in this matter on January 25, 2021. 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 promotes online travel reservation and accommodation services under its SKYSCANNER mark. The Complainant owns multiple registrations for its SKYSCANNER word mark and its SKYSCANNER composite design mark that features a depiction of a cloud. These registrations include coverage for travel advertising services (Cass 35), search engines relating to travel (Class 36), travel information and management services provided via websites and mobile applications (Class 39), and operation of a search engine relating to travel (Class 42).

Complainant’s SKYSCANNER word and composite design marks are registered for travel-related services in multiple jurisdictions around the world including the United Kingdom, the European Union, Australia, Canada, Switzerland, the Russian Federation, Singapore, Turkey, the United States of America, Japan, Colombia, Kazakhstan, Turkey, Colombia, Ukraine, Vietnam, Syria, and Norway. Complainant’s documented rights include a United Kingdom registration granted in 2004, International registrations granted in 2006 and 2010, a registration in Canada granted in 2011, and registrations granted by multiple other jurisdictions between 2009 and 2015. The record confirms that the foregoing registrations have been maintained by the Complainant and are currently valid.

The Complainant promotes its services under its SKYSCANNER marks via its website available at <skyscanner.net> and via mobile applications. Third party metrics show that Complainant’s website attracts significant traffic and engagement from visitors around the world.

WHOIS records confirm that the disputed domain name was created on September 26, 2020 and that the domain name is registered to the Respondent (Oleg Zasel). The contact details for the disputed domain name are “Lenin str., 12, ap. 34; 123456 Moscow, Russian Federation (address); +79160000000” (telephone); and […]@mail.ru (email)”. The record shows that the following content has been displayed on a single page featured at the disputed domain name:

“Welcome to nginx! If you see this page, the nginx web server is successfully installed and working. Further configuration is required. For online documentation and support please refer to nginx.org. Commercial support is available at nginx.com. Thank you for using nginx.”

The disputed domain name is active, has been locked by the Registrar, and is scheduled to expire on September 26, 2021. .

No response was submitted in this proceeding, thus no further information about the Respondent is available.

5. Parties’ Contentions

A. Complainant

The Complainant has filed evidence confirming that its SKYSCANNER marks have been registered in multiple jurisdictions around the world. The Complainant has also provided examples of its online promotion and claims that its website available at “skyscanner.net” attracts 100 million visits per month. The Complainant also claims that its SKYSCANNER branded mobile application has been downloaded over 70 million times.

Assertions of global reputation and fame are referenced throughout the Complaint, with the Complainant claiming that it currently offers travel-related services in over thirty languages and in seventy currencies and citing a UDRP decision that acknowledged its “exclusive rights to the trade mark SKYSCANNER” and “compelling evidence that the [Complainant’s] SKYSCANNER trade mark enjoys considerable reputation” (Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983). The Complainant also claims that it has engaged in “aggressive international growth” since its establishment in 2003, and has submitted international publicity associated with a GBP1.4 billion acquisition in 2016 as evidence of its worldwide exposure.

The Complainant emphasizes that its registered trademark rights and global reputation precede the registration of the disputed domain name by many years, and alleges that the disputed domain name is “virtually identical” to its registered trademark rights because it has been composed by adding a hyphen between the terms “sky” and “scanner” and has been registered using a top-level domain (gTLD). The Complainant is unaware of any relevant trademark rights owned by the Respondent and confirms that it has not provided the Respondent with consent to use its SKYSCANNER mark in a domain name registration. Absence of bona fide use of the disputed domain name by the Respondent is detailed in the Complaint to support the contention that the Respondent has no legitimate interests that would support a decision in its favor.

The Complaint alleges that the Respondent must have been aware of the Complainant’s rights in its SKYSCANNER mark when it registered the disputed domain name and suggests that there can be no plausible reason for the Respondent to have selected the disputed domain name without knowledge of Complainant and its trademark rights. The Complaint proposes a presumption that the Respondent was aware of the Complainant’s rights when the disputed domain name was registered.

The Complainant proposes that the Respondent is scheming to make money by launching a website designed to compete with the Complainant or by selling the disputed domain name to the Complainant, one of the Complainant’s competitors, or a third party. In addition, the Complainant argues that the Respondent’s registration and retention of the disputed domain name satisfies the third element of the Policy based upon the theory of “passive holding” set forth in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complaint requests that ownership of the disputed domain name be transferred from the Respondent to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Panelist has reviewed the Complaint, all supporting evidence, and the proceeding history as set forth in the record. The Panelist notes that no response has been filed in this proceeding and that the record supports a decision in the Complainant’s favor.

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Respondent’s WHOIS details are displayed in English (ii) the disputed domain name is comprised of Latin characters that spell the English words “sky” and “scanner”, and (iii) that the language of the proceedings should be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present its objection to the proceedings being held in English and given that the Center did not hear from the Respondent regarding such matter. The Respondent had the opportunity to raise objections or make known its preference but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English

B. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. Thus, the Panel disregards gTLD “.xyz” for the purposes of the confusing similarity test and the evaluation for confusing similarity must be limited to the “sky-scanner” portion of the registration.

The record confirms that the Complainant owns trademark rights in SKYSCANNER as e.g., registered in in the United Kingdom in 2004 and was registered in multiple other jurisdictions between 2006 and 2015.

The disputed domain name incorporates the entirety of the Complainant’s mark. Use of a gTLD is a “standard registration requirement” and should be disregarded because it is a technical component. See WIPO Overview 3.0, section 1.11.1; see also Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087 (excluding .xyz from evaluation).

Because the gTLD portion is irrelevant, the only difference between the disputed domain name and the Complainant’s SKYSCANNER trademark is the use of a hyphen in the disputed domain name. A hyphen is mere punctuation, and hyphens are routinely dismissed by past UDRP panels as non-distinctive manner. See, e.g., Coles-Meyer Limited v. Domaintrade@hotmail.com, WIPO Case No. D2000-1820 (concluding that “The addition of the hyphen is an immaterial difference” while finding confusing similarity between the COLES MYER trademark and the <coles-myer.com domain name) and NovAtel Inc. v. Ann Clarke, WIPO Case No. D2019-0257 (use of a hyphen to create <nova-tel.com> did not prevent a finding of confusing similarity with the NOVATEL trademark).

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Noting the facts and arguments set out above, and as further described under the third element, tThe prima facie case presented by the Complainant shifts the burden of production to the Respondent, and the Respondent has not presented any arguments or evidence in its favor.

The Respondent has not submitted a reply to the Complaint, and there is no evidence to refute the Complainant’s allegations concerning this UDRP element.

The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

The Complaint proposed an inference that the Respondent registered the disputed domain name in bad faith.

The record shows that the Complainant’s SKYSCANNER mark was extensively registered in multiple jurisdictions around the world by 2015, nearly five (5) years before the Respondent registered the disputed domain name. There is also evidence that the Complainant’s mark is widely recognized. One of the panel decisions cited in the Complaint acknowledged SKYSCANNER as mark that “enjoys considerable reputation among potential consumers”. Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983. Another panel decision cited by the Complainant distinguished the SKYSCANNER mark as “widely known”. Skyscanner Limited v. Mohit Bajaj, WIPO Case No. D2016-1481.

Considerable factors support an inference of bad faith registration in this case. The disputed domain name has been composed using the Complainant’s SKYSCANNER mark in its entirety, and its use of a hyphen effectively reflects use of the Complainant’s mark in its entirety. See WIPO Overview 3.0, section 3.2.1. A number of panels have held that registration of a domain name, particularly one that parrots a widely known mark, indicates an intent to target that mark to promote misdirection of Internet traffic. See, e.g., The Dow Chemical Company v. dowchemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078 (finding <dowaychemical.com> registered in bad faith in view of the “widely known trademarks” of the complainant); see also IDR Solutions Ltd. v. Whois Privacy Corp., WIPO Case No. D2016-2156 (evidence of third party recognition of the complainant’s JPEDAL mark supported conclusion that <jpedal.org> was registered in bad faith). The hyphenated representation of the Complainant’s trademark in this disputed domain name is further evidence that registration was in bad faith. See Accenture Global Services Limited v. VistaPring Technologies Ltd., WIPO Case No. D2015-1922 (registration of <accentture.net>, an exact representation of the complainant’s ACCENTURE mark save a typographical error, cited as evidence that the respondent “must have been aware” of the ACCENTURE mark while concluding that the complainant’s rights were “the reason for having chosen the domain for typosquatting purposes”). The Panelist also notes that the record does include any evidence that the Respondent has rights, legitimate interests, and any credible explanation for selecting the disputed domain name, and that the lack of any explanation for the Respondent’s selection of the disputed domain name is relevant. See IDR Solutions Ltd. (citing “no apparent reason” justifying the respondent’s selection and registration of the domain name).

The question of bad faith use requires further review. The Complainant alleges that the disputed domain name has been used in bad faith due to “passive holding” by the Respondent. As detailed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, evidence of “passive holding” of a domain name does not, on its own, constitute bad faith use. A finding of “passive holding” is justified only if supported by a review of the other circumstances in a particular case. Id.

The Record shows that the disputed domain name has been used display content that may misdirect Internet traffic. Specifically, the disputed domain name has been used to present the following text to visitors:

There is no indication as to what “nginx” means, but the above text is designed to encourage users to visit other domain names located at nginx.org and nginx.com. This content indicates an intent to redirect Internet users in bad faith based on traffic intended for the Complainant, particularly given that the disputed domain name is nearly identical to the Complainant’s SKYSCANNER trademark. Even if the above content was posted by a third party registrar or domain host, the Respondent should not be permitted to escape responsibility for potential Internet traffic redirection without evidence of good faith intentions or efforts to mitigate confusion. See WIPO Overview 3.0, section 3.5 (consensus that respondents cannot “disclaim responsibility” for auto-generated content); see also FIL Limiated v. Elliott Evans, WIPO Case No. D2014-0259 evaluating use of the <fundnetwork.org> domain name challenged based on rights in the FUNDNETWORK trademark (links allegedly posted by a registrar would “usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks”). The Respondent has provided no explanation for the “nginx” content in this case.

Bad faith use is further supported by the nature of the domain name (effectively identical to a widely-known mark), the “clear absence of any right or legitimate interests” of the Respondent, and “no credible explanation” for the Respondent’s need to register and use the disputed domain name. WIPO Overview 3.0, section 3.2.1. In addition, the record shows that the Respondent furnished false contact information for WHOIS records. The Center was unable to serve a physical copy of the Complaint because the WHOIS records list a postal code and city that do not correspond with one another. This is not surprising given the suspicious content in WHOIS records (e.g., a postal code of 123456 and a phone number that ends in 0000000). Provision of false contact information supports a finding of bad faith in view of all other circumstances in this case. See Association Robert Mazars v. INTEG Kumaran, WIPO Case No. D2009-1679 (false contact information cited as evidence of bad faith registration and use); see also Banco Original do Agronegócio S.A. v. Private Registration, WIPO Case No. D2013-2037 (citing inaccurate contact information and lack of legitimate use).

The Panelist finds that the requirements paragraph 4(a)(iii) of the Policy have been satisfied.

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 <sky-scanner.xyz> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: February 8, 2021