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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Oscar Martinez

Case No. D2021-0667

1. The Parties

Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.

Respondent is Oscar Martinez, Mexico.

2. The Domain Name and Registrar

The disputed domain name <skyscannermarketing.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2021.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on April 14, 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

Complainant has a number of trademark registrations for the mark SKYSCANNER in various countries around the world, including United Kingdom trade mark No. UK00002313916 registered on April 30, 2004, for services in International Classes 35, 38, and 39. Complainant uses the mark in connection with travel-related services. The disputed domain name was registered on January 19, 2021, and does not resolve to an active website. Complainant provided evidence that the disputed domain name has been used in connection to a fraudulent scheme.

5. Parties’ Contentions

A. Complainant

Complainant asserts that its website at “www.skyscanner.net” attracts 100 million visits per month and that its SKYSCANNER smart device app has been downloaded over 70 million times. Complainant asserts that its services are available in more than 30 languages and 70 currencies, and that its website is ranked 1,671 globally for Internet traffic and engagement, and 107 in the United Kingdom. Complainant asserts that the disputed domain name is virtually identical to Complainant’s SKYSCANNER mark, adding only the term “marketing” (plus the generic Top-Level Domain (gTLD) “.com”). Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent does not own any registered rights in any trademarks incorporating all or part of the disputed domain name, and that Complainant’s mark is not descriptive or generic. Complainant has not consented to Respondent’s use of Complainant’s mark, and Respondent uses the disputed domain name to pose as Complainant “in an elaborate attempt to deceive consumers into providing the Respondent with sensitive personal information, including bank details and identity documents”. Complainant attached to the Complaint a copy of an email message that purports to offer to purchase the recipient’s timeshare membership, as well as an allegedly false contract offer bearing Complainant’s marks and stating “Proof of Ownership of your vacation membership will be required to evaluate further your vacation membership. Please e-mail or fax the documents to us for a response on a final offer”. Complainant asserts that the use of the disputed domain name to defraud the Complainant and consumers is not legitimate, noncommercial, or bona fide, and that Complainant has succeeded in getting Respondent’s hosting company to take down Respondent’s website and suspend the associated DNS records. Complainant further asserts that Respondent was aware of Complainant’s trademark rights when Respondent registered the disputed domain name, and that very shortly after registering the disputed domain name Respondent began carrying out its allegedly fraudulent scheme to “commit business impersonation fraud (by posing as the marketing department of Complainant’s business), with the aim of securing sensitive consumer information”.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “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”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.

Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the SKYSCANNER mark.

The disputed domain name consists of the SKYSCANNER mark, plus the dictionary term “marketing”, plus the “.com” gTLD. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Thus, the addition of “marketing” and the “.com” gTLD does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark on the facts of this case. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) 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 confusing similarity test.”). See also Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2020-3172 (finding <sky-scanner-flight.online> confusingly similar to Complainant’s mark); and Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2019-0690 (finding <skyscanner-flights.com> confusingly similar to Complainant’s mark).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.

“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 [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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.” Policy, paragraph 4(c).

There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name. Rather, Complainant asserts that: Respondent is not authorized to use the SKYSCANNER mark, Respondent does not own any registered rights in any trademarks incorporating the SKYSCANNER mark, the SKYSCANNER mark is not descriptive or generic, and Respondent’s use of the disputed domain name “to deceive consumers into providing the Respondent with sensitive personal information, including bank details and identity documents” is not bona fide, legitimate, or noncommercial.

These allegations make out a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2020-3172 (finding a lack of rights or legitimate interests where “Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy”, and where Respondent allegedly “used the disputed domain name to commit business impersonation fraud, selling non-existent flight tickets to unsuspecting consumers”); Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2019-0690 (finding no rights or legitimate interests where the Complainant alleged that the Respondent’s use of <skyscanner-flights.com> was not authorized, that Respondent was not commonly known by the disputed domain name, and “the Respondent’s use of the disputed domain name misleadingly created an association with the Complainant for commercial gain”); WIPO Overview 3.0, section 2.13.1 (“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.”).

Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or

(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

“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 Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.

Complainant asserts that Respondent is using the disputed domain name “in an elaborate attempt to deceive consumers into providing the Respondent with sensitive personal information, including bank details and identity documents”, and attaches to the Complaint examples of Respondent offering to purchase a timeshare membership subject to the owner providing certain personal information. Respondent has not sought to controvert these allegations.

As noted in the WIPO Overview 3.0, section 3.4, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”

Consistent with the WIPO Overview, panels have found that similar schemes involving Complainant’s mark constituted bad faith. See, e.g., Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2020-3172 (finding bad faith where the Respondent allegedly “used the disputed domain name to commit business impersonation fraud, selling non-existent flight tickets to unsuspecting consumers”); Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya, WIPO Case No. DCC2020-0003 (“use of the disputed domain names <scyscanner.co> and <scyscanner.cc> for the illegitimate activity [selling flights that do not exist] is manifestly considered evidence of bad faith”); Skyscanner Limited v. WhoisGuard, Inc. / Julia Kitsune, WIPO Case No. D2020-2652 (finding bad faith where “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.”).

Noting the use of the disputed domain name, it is clear that Respondent knew of Complainant and Complainant’s trademark at the time of registration, and sought to unfairly take advantage of the Complainant’s trademark through the registration and use of the disputed domain name.

Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is 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 <skyscannermarketing.com> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Date: April 28, 2021

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