WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-3498
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom (“UK”), represented by Lewis Silkin LLP, UK.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <skyscannerd.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 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 October 26, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfy 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on December 27, 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 Skyscanner Limited, a United Kingdom Limited company whose services are available in over 30 languages and in 70 currencies.
The Complainant owns several registrations around the world for the mark SKYSCANNER, including the International registrations Nos. 900393 for Skyscanner, registered on March 3, 2006, and 1030086 for SKYSCANNER, registered on December 1, 2009.
The Complainant operates its official website from the domain name <skyscanner.net>, which attracts 100 million visits per month at the time of this complaint.
The disputed domain name <skyscannerd.com> was registered on May 17, 2021, and redirects to the Complainant’s official website.
5. Parties’ Contentions
The Complainant argues that the disputed domain name entirely reproduces its trademark SKYSCANNER, only adding the letter “d” (which is displayed below the letter “r” on a Qwerty keyboard).
The Complainant claims that the Respondent lacks rights in the disputed domain name, that the term “Skyscanner” is not descriptive, nor does it have any dictionary meaning and that it has not received any consent to use the trademark SKYSCANNER in the disputed domain name.
According to the Complainant, given the international presence and reputation of its mark, the Respondent was aware of the Complainant’s rights prior to the registration of the disputed domain name and registered it with the intention to create a false impression of association with the Complainant.
The Complainant also informs and shows evidence that the disputed domain name redirects automatically to the Complainant’s website and that there are active email (MX) records associated with the disputed domain name, which suggests fraud risk to deceive consumers, for illicit gain.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
A. Identical or Confusingly Similar
The evidence presented in the Complaint demonstrates that the Complainant is the owner of several trademark registrations for SKYSCANNER in different jurisdictions as well as the domain name <skyscanner.net>, which corresponds to its website.
The disputed domain name is confusingly similar to the Complainant’s trademark SKYSCANNER. Indeed, the addition of the letter “d” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark.
As numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register a domain name containing the trademark SKYSCANNER.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. On the contrary, the complaint shows that the disputed domain name redirects to the Complainant’s website and has active email functionality.
The Panel finds, therefore, that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. Rather, the misspelled nature of the disputed domain name shows an intent by the Respondent to confuse users expecting the Complainant. The one-letter difference is unlikely to be noticed by Internet users, especially on their mobile phone, and thus the potential for fraud in light of the active MX records is high.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark SKYSCANNER is registered by the Complainant in different jurisdictions and has been used for years. These trademark registrations predate the registration date of the disputed domain name.
Also, the Complainant registered the domain name <skyscanner.net>, which resolves to its official website.
The Complainant’s SKYSCANNER mark is recognized in its area. It is clear to the Panel that the Respondent knew about the Complainant’s services and its trademark rights at the time of the registration of the disputed domain name and intended to cause confusion and/or association among Internet users. This finding is reinforced given the disputed domain name’s redirection to the Complainant’s official website.
A domain name that reproduces the mark SKYSCANNER simply adding the letter “d” is undoubtedly suggestive of the Respondent’s bad faith. It does not seem to make any sense for the Respondent to register the disputed domain name, except to mislead users. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark SKYSCANNER as described in paragraph 4(b)(iv) of the Policy has been demonstrated. Similarly, prior panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See section 3.1.4 of the WIPO Overview 3.0.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
Also, the Respondent has engaged in the use of a privacy service to mask its identity, which is further indicia of bad faith, under the circumstances of this proceeding.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name was registered and is being used 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, <skyscannerd.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: January 10, 2021