WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Sunil S
Case No. D2021-1942
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Sunil S, India.
2. The Domain Name and Registrar
The disputed domain name <skyescanner.info> 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 June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, 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 June 24, 2021, 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 June 24, 2021.
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 June 28, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was July 18, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on July 23, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 30, 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 offers various travel-related advertising, information, arrangement, search and related services under the SKYSCANNER trademark. It owns numerous registrations for the SKYSCANNER trademark including, for example, International Trademark Registration No. 900393 (registered March 3, 2006) and International Trademark Registration No. 1030086 (registered December 1, 2009).
At the time of this proceeding, Complainant’s website located at “www.skyscanner.net” attracts 100 million visits per month and, to date, Complainant’s 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 November 12, 2019 the Complainant’s website at “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the United Kingdom. Several prior UDRP decisions have recognized the considerable reputation Complainant has established in its SKYSCANNER mark. See Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983; Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs. K Ananthan, WIPO Case No. D2019-0988.
The disputed domain name was registered on March 23, 2021. Previously, the disputed domain name resolved to a website that displayed a flight aggregator tool, which encourages Internet users to search for and book flights, under the name “SKY E-SCANNER”. The disputed domain name currently does not appear to resolve to an active website.
5. Parties’ Contentions
According to Complainant, the disputed domain name is virtually identical to the Complainant’s SKYSCANNER trademark in which Complainant has rights as demonstrated through its cited registrations, with the only minor distinction being that the disputed domain name includes the letter “e” between the words “sky” and “scanner”. Complainant asserts that the disputed domain name remains aurally identical to, and visually similar to a high degree with, the Complainant’s mark. Complainant also notes that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible to ignore the generic Top-Level Domain (“gTLD”) in which the disputed domain name is registered.
According to Complainant, to its knowledge, Respondent does not own any registered rights in any trademarks, which comprise part or all of the disputed domain name. According to Complainant, the term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. Complainant indicates that it has not given its consent for the Respondent to use Complainant’s registered trademarks in a domain name registration. According to Complainant, the provision of travel information and arrangement services under the term “skyescanner” as used in the disputed domain name is designed to mislead consumers into believing that the travel arrangement services supplied through the Respondent’s website originate from Complainant, and constitutes an infringement of the Complainant’s registered trademarks. Complainant asserts that by its very nature, such use cannot constitute a legitimate noncommercial interest, nor a bona fide offering of goods and services. Complainant notes that given the famous nature of the Complainant’s mark and the fact that no other individual or business owns registered trademark rights in the SKYSCANNER mark, not only is it likely that Respondent was aware of the Complainant’s rights prior to registering the disputed domain name but it is inevitable that visitors to the website at the disputed domain name would mistakenly believe there to be association with the Complainant.
Complainant submits that, given that Complainant’s registered rights date back to 2002, Respondent was aware of the reputation of the Complainant’s business under its SKYSCANNER mark at the time the disputed domain name was registered, by which point the Complainant already enjoyed global fame in its marks. Complainant notes that within days of registering the disputed domain name, Respondent pointed it to a website containing a flight aggregator tool in direct conflict with the Complainant’s core offering. According to Complainant, there can be no plausible explanation for this, other than the Respondent sought to profit illegitimately by misleading consumers into believing that the travel arrangement and information services provided through the disputed domain name originate from or are otherwise affiliated with Complainant, when this is not the case. Complainant asserts, therefore, that Respondent registered and uses the disputed domain name in bad faith insofar as it points a website that is designed to create, for financial benefit, a likelihood of confusion with the Complainant’s rights in its SKYSCANNER mark. Complainant also states 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 trademark in a domain name, where there is no response, and no explanation as to why the use could be good faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true”. Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SKYSCANNER mark through its various national and international registrations, as referenced above.
With Complainant’s rights in the SKYSCANNER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name consists of an obvious typographical variation of the SKYSCANNER mark, in which the letter “e” is inserted between the “sky” and “scanner” elements of the mark. This variation does not prevent a finding of confusing similarity between the disputed domain name and the mark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its SKYSCANNER mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed, or permitted Respondent to use the SKYSCANNER mark in any way. Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name. Respondent’s use of the disputed domain name also cannot be considered a bona fide offering of goods or services. At the time this decision was drafted, the disputed domain name merely resolved to a blank page, but Complainant provided some screenshot evidence that the disputed domain name previously resolved to a website through which Respondent purportedly offered travel related services in competition with services offered by Complainant under its SKYSCANNER mark in a jurisdiction where Complainant has registered rights in this mark. Such competing use under a nearly identical mark cannot be considered bona fide within the meaning of the Policy.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence regarding its longstanding and widespread use of the well-known SKYSCANNER mark which long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the SKYSCANNER mark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Based on the evidence on record, Respondent was previously using the disputed domain name to direct Internet users to a website offering travel arrangement services similar to and/or in direct competition with those offered by Complainant under its SKYSCANNER mark. The Panel notes that as of the writing of this decision, the disputed domain name appears to be inactive. Nonetheless, such prior use of the disputed domain name, which as established above is confusingly similar to Complainant’s SKYSCANNER mark, is apparently designed to misleadingly divert consumers to Respondent’s website located at the disputed domain name for Respondent’s own commercial gain. See Policy, paragraph 4(b)(iv). Such activity also disrupts Complainant’s business within the meaning of Policy paragraph 4(b)(iii).
Even if Respondent had not resumed active use of the disputed domain name and it continued to resolve to a blank page, such use of the disputed domain name would still constitute use in bad faith. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. 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. Id. The passive holding doctrine applies in this case given the distinctiveness of Complainant’s mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, and the implausibility of any conceivable good faith use to which the disputed domain could be put by Respondent without infringing upon Complainant’s rights in its SKYSCANNER mark. The Panel finds it more likely that Respondent selected the disputed domain names with the intention of taking advantage of Complainant’s reputation by registering a domain name containing an obvious typographical variation of Complainant’s mark with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See, e.g., Koc Holding A.S. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / “Madonna.com”, WIPO Case No. D2000-0847).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
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 <skyescanner.info> be transferred to Complainant.
Brian J. Winterfeldt
Date: August 4, 2021