WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Semen Arnov

Case No. D2021-2146

1. The Parties

The Complainant is Skyscanner Limited, United Kingdom (“UK”)

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Semen Arnov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <skyscanner.click> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same July 6, 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 July 9, 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 the same day.

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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on August 12, 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 is a UK based company founded back in 2003. The Complainant operates an online flight search engine at different domain names including <skyscanner.net> and <skyscanner.com>, through which consumers can search for and book travel arrangements. The Complainant also offers a SKYSCANNER mobile application through which consumers can likewise search for and make travel arrangements.

In 2016, the Complainant was acquired by Ctrip (now Trip.com Group) in a deal valued at GBP 1.4bn.

The Complainant has registered a number of SKYSCANNER trademarks worldwide, including in the Russian Federation, for a broad range of services related to advertising, travel information and arrangement, operating of a search engine relating to travel. Some of the SKYSCANNER trademark registrations are indicated below:

- International Registration for SKYSCANNER No. 1030086 registered on December 1, 2009 for the services in classes 35, 39, 42, designating inter alia the Russian Federation;

- International Registration for SKYSCANNER and design No. 1133058 registered on August 16, 2012 for the services in classes 35, 39, 42, designating inter alia the Russian Federation;

- International Registration for SKYSCANNER No. 1481492 registered on June 6, 2019 for the services in class 43, designating inter alia the Russian Federation;

- United Kingdom trademark Registration for SKYSCANNER No. UK00002313916 registered on April 30, 2004 for services in classes 35, 38 and 39;

- Canadian trademark Registration for SKYSCANNER No. TMA786,689, registered on January 10, 2011 for services in classes 35, 38 and 39; and

- New Zealand trademark for SKYSCANNER Registration No. 816550, registered on October 7, 2010 for services in classes 35, 39 and 42.

The Complainant is the owner of the domain names <skyscanner.net> and <skyscanner.com> since July 3, 2002. The Complainant’s 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.

The Russian Federation version of the Complainant’s website is accessible at the domain name <skyscanner.ru>, which the Complainant registered on March 31, 2007.

The Respondent appears to be a Russian individual. According to the WhoIs, the disputed domain name was registered on December 9, 2020. The disputed domain name does not currently resolve to an active website or page, however, based on the provided by the Complainant evidence (Microsoft Defender warning screenshot) the disputed domain name could be involved in phishing attacks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has strong rights in SKYSCANNER trademark by virtue of its longstanding use and registration of the mark in a number of jurisdictions around the world.

A number of previous UDRP panels has confirmed the Complainant’s rights and fame of the SKYSCANNER trademark.

The Complainant argues that the disputed domain name is identical to the Complainant’s SKYSCANNER mark.

The “.click” generic Top-Level Domain (“gTLD”) should be disregarded during the confusing similarity analysis, because it is a functional element, and it can be considered as highly descriptive considering the Complainant’s worldwide activities.

The term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent (i) owns no rights in the SKYSCANNER mark, (ii) is not commonly known by the name “skyscanner,” and (iii) has made no legitimate use of the disputed domain name.

The disputed domain name replicates the Complainant’s well-known trademark in its entirety, therefore, the Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the SKYSCANNER trademark when the Respondent registered the disputed domain name.

The Internet users accessing the disputed domain name are presented with a malware and phishing warning. The Complainant believes that the Respondent seeks to mislead consumers into believing that the disputed domain name is connected to the Complainant’s business, and acquiring users’ sensitive information.

In the absence of any meaningful justification from the Respondent, the Complainant considers that the Respondent’s passive holding of the disputed domain name constitutes use in bad faith, especially because the Respondent has taken steps to mask its identity through the WhoIs privacy services. The Complainant notes that previous WIPO panels under similar circumstances came to the same conclusions (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has proved its rights in the SKYSCANNER trademark through international registrations dating back to 2009 designating numerous countries worldwide including the Russian Federation, and also through national trademark registrations registered in various countries of the world.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

Furthermore, the Panel considers that the disputed domain name is identical to the Complainant’s SKYSCANNER trademark.

The Panel notes that the disputed domain name incorporates the Complainant’s trademark SKYSCANNER in its entirety and is identical to the Complainant’s trademark.

The gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The practice of disregarding the TLD applies also to “new gTLDs” such as gTLDs “.click”. Previous UDRP panels considering this issue came to the same conclusion. Please see AB Electrolux v. Rajaa Nasr, WIPO Case No. D2018-1822. Therefore, the Panel disregards the gTLD for the purposes of this comparison.

The Panel finds that according to a side-by-side comparison the disputed domain name reproduces the Complainant’s SKYSCANNER trademark in its entirety and, thus, that the Complainant’s SKYSCANNER trademark is recognizable within the disputed domain name.

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the complainant establishes a prima facie case against the respondent under this ground, the burden of production shifts to the respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that the complainant frequently address to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy) and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

The Panel finds that because the disputed domain name is identical to the Complainant’s SKYSCANNER trademark any use of such domain name by the Respondent carries a high risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

According to the Complainant, the Respondent is not an authorized or licensed to use the SKYSCANNER trademark in the disputed domain name, as well as not in any way affiliated with the Complainant.

The Panel also notes that the Respondent failed to come forward with any relevant evidence confirming use or demonstrable preparations to use of the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The existing evidence suggests that the Respondent might be using the disputed domain name in connection with phishing activities. Previous panels categorically held that such use never confer rights or legitimate interests on a respondent. See section 2.13.1 of the WIPO Overview 3.0.

Taking into account the fame, reputation, and long period of substantive use of the Complainant’s SKYSCANNER trademark online and in the corresponding Complainant’s domain names and websites, and evidence suggesting that the disputed domain name is involved in illegal activity, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the Policy).

According to the Registrar’s information, “Semen Arnov” is the registrant of the disputed domain name. The Panel did not find any evidence that the Respondent is commonly known by the disputed domain name. The Panel concludes that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.

Thus, the Panel finds that the Complainant has satisfied the second element of the Policy, namely paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As the Panel established above, the Complainant’s SKYSCANNER trademark was widely used in commerce well before the registration of the disputed domain name on December 9, 2020. The Complainant, its SKYSCANNER trademark and its service are very popular among travelers globally and received a substantial level of media attention especially during acquisition by Ctrip in 2016.

The Panel finds with a high degree of certainty that the Respondent knew of the Complainant’s SKYSCANNER trademark when registering the disputed domain name. This conclusion is supported by the fact that the disputed domain name is identical to the Complainant’s SKYSCANNER trademark, and that the Respondent is likely to be involved into illegal phishing activities.

Previous panels noted that evidence of illegitimate activity such as phishing would be manifestly considered as evidence of bad faith. See section 3.4 of the WIPO Overview 3.0.

Furthermore, the Responded failed to submit a response to disprove allegations of illegal activity or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name.

The Panel concludes that the Respondent’s intent for registering the disputed domain name, which reproduces the Complainant’s trademark, has probably been to capitalize on the goodwill of the Complainant’s trademark. Furthermore, the Complainant has provided evidence of a message informing that the website at the disputed domain name has been reported as unsafe. The Panel finds that the Respondent registered the disputed domain name in bad faith probably to take advantage of its identity with the Complainant’s trademark.

The Panel finds it implausible that the disputed domain name could be used by the Respondent in good faith considering that it is identical to the Complainant’s trademark. The Panel finds that the fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith in these circumstances.

Therefore, under the totality of the circumstances, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <skyscanner.click> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: August 28, 2021