WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Oleg Kokov, Boris Konopel, Natalya Natalya (Natalya Nosovas), Alexey Kura, Alexey Kura, Kirill Mostov, Egor Kosov

Case No. D2021-2482

1. The Parties

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

The Respondents are Oleg Kokov, Boris Konopel, Natalya Natalya (Natalya Nosovas), Alexey Kura, Kirill Mostov, and Egor Kosov, Russian Federation.

2. The Domain Names and Registrars

The disputed domain names <skyscaner.org>, <skyscanners.org>, <skyskanner.org> and <skyskanners.org> are registered with Network Solutions, LLC.

The disputed domain names <skyskanners.net>, <skyskcnner.net>, and <skyskcnner.com> are registered with Wix.com Ltd.

Collectively, Network Solutions, LLC and Wix.com Ltd., are hereinafter referred to as “the Registrars”.

3. Procedural History

The Complaint was filed in English, with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On August 2, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 3 and August 4, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on August 9, 2021.

On August 9, 2021, the Center wrote to the Parties in Russian and English, in respect of the language of the proceeding, and invited them to submit their positions in this respect. On the same date, the Complainant requested the language of the proceeding to be English. The Respondents did not submit any comments or requests on the language of the proceeding.

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 Respondents of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 22, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 4, 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 the owner of a global travel search site which attracts 100 million visits per month. Its SKYSCANNER smart device application has been downloaded over 70 million times. The Complainant’s services are available in over 30 languages and in 70 currencies. As of November 2019, the Complainant’s website at “www.skyscanner.net” was ranked at No. 1,671 globally for internet traffic and engagement and at No. 107 in the United Kingdom.

The Complainant is the owner of the following trademark registrations for the sign SKYSCANNER (the “SKYSCANNER trademark”):

- the United Kingdom trademark SKYSCANNER with registration No. UK00002313916, registered on April 30, 2004, for services in International Classes 35, 38, and 39;

- the International trademark SKYSCANNER with registration No. 900393, registered on March 3, 2006, for services in International Classes 35, 38, and 39;

- the International trademark SKYSCANNER with registration No. 1030086, registered on December 1, 2009, for services in International Classes 35, 39, and 42; and

- the International trademark SKYSCANNER with registration No. 1133058, registered on August 16, 2012, for services in International Classes 35, 39, and 42.

The disputed domain names were registered as follows:

At the time of filing of the Complaint, the disputed domain name <skyscaner.org> resolved to a website related to air travel as it contained a background image of an airplane in flight, and the other disputed domain names were inactive.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are virtually identical to its SKYSCANNER trademark, because they are deliberate misspellings designed to pass unnoticed by Internet users.

According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because the Complainant has not given its consent to them to use its registered trademarks in disputed domain names registrations. The Complainant notes that the term “Skyscanner” is not descriptive and does not have any generic or dictionary meaning. According to the Complainant, the Respondents must have been aware of the Complainant’s rights prior to registering the disputed domain names, and visitors to the disputed domain names may mistakenly believe that they are associated to the Complainant.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It notes that they were registered in June and July 2021, while the Complainant’s SKYSCANNER trademark dates back to 2002. In view of this, and given the famous nature of its trademark and the fact that no other individual or business owns registered trademark rights in the SKYSCANNER trademark, the Respondents must have been aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the disputed domain names were registered, and sought to profit illegitimately by misleading consumers into believing that the disputed domain names were connected to the Complainant’s business.

The Complainant notes the practice under the UDRP holding 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 and there is no response and no explanation as to why the use could be good faith. In the present case, in the absence of any meaningful justification for their registration and use, the Complainant submits that the Respondents’ passive holding of the disputed domain names constitutes use in bad faith inasmuch as they are used to disrupt the Complainant’s business. The Complainant also notes the fact that the Respondents have taken steps to mask their identities through WhoIs privacy services.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Consolidation of the Respondents

The Complainant requests the disputes in respect of the disputed domain names to be consolidated in a single proceeding, because consolidation would be fair and equitable to all Parties and would lead to procedural efficiency.

The Complainant submits that the disputed domain names are under common control, as their registrants are based in the same area (Moscow) and the disputed domain names were registered within a single five-week period (June 9, 2021 – July 15, 2021) through the same two registrars (Network Solutions and Wix) and use the same or highly similar domain name servers (WIX-DNS). Further, the registrants of the disputed domain names <skyscanners.org>, <skyskanners.org>, <skyskanner.org>, and <skyscaner.org> use the same contact phone number, despite having different names and addresses.

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainant or to its arguments in support of the request.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, UDRP panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant.

The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the Respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. All of the disputed domain names were registered within a short period of time, and all of them are similar misspellings of the distinctive SKYSCANNER trademark of the Complainant, and many of them use the same or highly similar domain name servers, while the telephone numbers for four of the disputed domain names provided by their registrants to the Registrars are identical. Therefore, and in the lack of any denial of it by their registrants, it is more likely than not that the disputed domain names are under common control.

None of the Respondents has advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.

6.2. Procedural issue – Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names <skyskanners.net>, <skyskcnner.net>, and <skyskcnner.com> is Russian. Under paragraph 11 of the Rules, 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 Complainant respectfully requests that the language of proceedings be English. It submits that the Registrants have a working knowledge of English because they have chosen to target the Complainant’s SKYSCANNER trademark, which is a portmanteau of two English words. The Complainant notes that it is not familiar with Russian and to hold proceedings in Russian would place a disproportionate burden on it because it would need to have its Complaint translated professionally. Alternatively, the Complainant requests that its Complaint is accepted in English and the Respondents’ Response is accepted in Russian.

The Center has sent all its communications to the Respondents in both English and Russian, and has invited the Respondents to express their views on the language of the proceeding. The Respondents have not submitted any Responses or any objections to the Complainant’s request that the proceedings be held in English. This satisfies the Panel that the Respondents would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.3. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

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

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondents have registered and are using the disputed domain names in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

None of the Respondents has however submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the SKYSCANNER trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com”, “.net”, and “.org” gTLDs of the disputed domain names.

Each of the disputed domain names represents a misspelling of the SKYSCANNER trademark, which remains easily recognizable in them. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the SKYSCANNER trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, because the Complainant has not given its consent to them to use its registered trademarks in disputed domain names registrations. The Complainant notes that the term “Skyscanner” is not descriptive and does not have any generic or dictionary meaning. According to the Complainant, the Respondents must have been aware of the Complainant’s rights prior to registering the disputed domain names, and visitors to the disputed domain names may mistakenly believe that they are associated to the Complainant.

Thus, the Panel finds that the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

None of the Respondents has submitted a formal Response. They have thus not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain names, and have not denied the allegations of the Complainant or disputed the evidence that it has brought forward. As discussed in section 6.1 above, it is more likely than not that the disputed domain names are under common control.

The disputed domain names are all confusingly similar to the SKYSCANNER trademark and appear as misspellings of it. The evidence in the case file shows that the disputed domain name <skyscaner.org> has resolved to a webpage containing the image of a flying airplane, while the other disputed domain names are inactive.

In view of the above, the Panel concludes that by engaging in serial typosquatting targetting the SKYSCANNER trademark, the Respondents have attempted to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain names Internet users seeking the Complainant’s services. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondents in the disputed domain names.

Therefore, the Panel finds that the Respondents do not have rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”

The disputed domain names are confusingly similar to the SCYSCANNER trademark and all of them are classic examples of typosquatting. They were all registered in June and July 2021, while the Complainant’s distinctive SKYSCANNER trademark was first registered in 2004. As discussed in section 6.1, it is more likely than not that all of them are under common control. The Complainant states that it has not authorized the registration and use of the disputed domain names, and none of the Respondents maintains the opposite or provides any plausible explanation for their registration and use.

In view of the above and in the lack of a denial by the Respondent of any of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondents must have been well aware of the goodwill of the Complainant’s SKYSCANNER trademark when they registered the disputed domain names, and that by engaging in serial typosquatting against this trademark, the Respondents have attempted to improperly capitalize on the reputation and goodwill associated with this trademark by confusing Internet users seeking the Complainant’s services that they are reaching official online locations where the these services are provided. The evidence in the case file shows that the disputed domain name <skyscaner.org> has resolved to a webpage containing the image of a flying airplane, which supports the same conclusion.

The other disputed domain names do not resolve to active websites. However, in view of the distinctiveness and popularity of the SKYSCANNER trademark and the fact that these disputed domain names are misspellings of it, it appears to the Panel that the Respondents cannot put these disputed domain names to any legitimate use, and that their registration is suggestive of their intent to seek unjust benefit from the notoriety of the Complainant’s trademark.

On the basis of all the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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 names <skyscaner.org>, <skyscanners.org>, <skyskanner.org>, <skyskanners.net>, <skyskanners.org>, <skyskcnner.com>, and <skyskcnner.net> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: October 28, 2021