WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Host Master, Transure Enterprise Ltd

Case No. D2021-1948

1. The Parties

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

The Respondent is Host Master, Transure Enterprise Ltd, United States of America.

2. The Domain Name and Registrar

The disputed domain name <flyskyscanner.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 29, 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 amended Complaint on June 29, 2021.

The Center verified that the Complaint together with the amended 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2021.

The Center appointed Anna Carabelli 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

The Complainant owns a number of trademarks in jurisdictions around the world for the term SKYSCANNER, including the following:

-International trademark Registration No. 900393 for SKYSCANNER, registered on March 3, 2006, in classes 35, 38 and 39;
- International trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, in classes 35, 39 and 42;
- Indian trademark Registration No. 1890840 for SKYSCANNER, registered on December 2, 2009, in classes 35, 38 and 39;
- United Kingdom trademark Registration No. UK00002313916 for SKYSCANNER, registered on April 30, 2004, in classes 35, 38 and 39;
- Canadian trademark Registration No. TMA786689 for SKYSCANNER, registered on January 10, 2011, in classes 35, 38 and 39; and
- New Zealand trademark Registration No. 816550 for SKYSCANNER, registered on October 7, 2010, in classes 35, 39 and 42;
- European Union trademark Registration No. 1030086 for SKYSCANNER, registered on December 1, 2009, in classes 35, 39 and 42.

The Complainant’s website attracts 100 million visits per month and, to date, its smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies.

Several previous UDRP panels have held that the Complainant has rights in the trademark SKYSCANNER and that the Complainant’s trademarks are well known worldwide with strong reputation.

The disputed domain name was registered on March 26, 2021. It resolves to a website containing pay-per-click links advertising the services of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant alleges and contends that:

- The disputed domain name is confusingly similar to the Complainant’s registered trademark SKYSCANNER, since it wholly incorporates the Complainant’s mark with addition of the descriptive term “fly”.

- The Respondent lacks rights or legitimate interests in the disputed domain name. In this connection, the Complainant states that the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name and the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The Complainant also submits that the disputed domain name resolves to a website containing pay-per-click links advertising the services of the Complainant’s competitors and that according to section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this does not represent a bona fide offering.

- The disputed domain name has been registered and is being used in bad faith. In this connection, the Complainant asserts that (i) the Respondent was aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the disputed domain name was registered and (ii) the disputed domain name is being used in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s.

The Complainant also submits that the in the years 2019-2021 the Respondent has been involved in thirteen UDRP proceedings, which supports the finding that the Respondent is engaged in a pattern of bad faith registrations.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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

(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 has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proved that it owns trademark registrations for SKYSCANNER throughout the world.

The disputed domain name contains exactly the trademark SKYSCANNER and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

The addition of the descriptive term “fly” does not prevent a finding of confusing similarity because the Complainant’s trademark is clearly recognizable within the disputed domain name. As recorded in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element. Previous UDRP panels have also held that the generic Top-Level Domain, in this case “.com”, is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.

Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1).

The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark SKYSCANNER and asserts that the Respondent cannot have any rights or legitimate interests in the disputed domain name, as evidenced by the fact that the disputed domain name resolves to a pay-per-click webpage displaying links advertising the services of the Complainant’s competitors.

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

In the present proceedings, the Respondent’s bad faith registration is established by the fact that the disputed domain name (i) purposefully incorporates the SKYSCANNER trademark and (ii) was registered long after this trademark became well known to consumers.

Given the distinctiveness and the well-established reputation of the Complainant’s SKYSCANNER trademark (also recognized in many previous UDRP decisions - see amongst others Skyscanner Limited v. Chun Yuan Jiang, WIPO Case No. D2018-1741; Skyscanner Limited v. Domain May Be For Sale, WIPO Case No. D2017-1946; Skyscanner Limited v. Sachin Rawat, WIPO Case No. D2018-0959; Skyscanner Limited v. Mohan Pillai, WIPO Case No. D2019-0690) it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name.

According to the uncontested evidence submitted by the Complainant, the disputed domain name points to a parking page containing pay-per-click links advertising the services of the Complainant’s competitors. In line with previous UDRP decisions (see section 2,9 of the WIPO Overview 3.0) the Panel finds that the purpose of the Respondent’s registration of the disputed domain name is to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark.

The fact that the Respondent has been named in a number of previous UDRP decisions further support a finding of bad faith.

Based on the above, the Panel concludes that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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 <flyskyscanner.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: August 16, 2021