WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. Contact Privacy Inc. Customer 0162707386 / Milen Radumilo
Case No. D2021-3500
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 0162707386, Canada / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <skyuscanner.com> (the “Disputed Domain Name”) is registered with Tucows 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 25, 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 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 October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 29, 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 company incorporated in the United Kingdom and trading since as early as 2002, it operates a global travel search engine enabling customers to search for, find, and book flights, hotels, and car rentals online.
The Complainant is the owner of numerous trademark registrations for its SKYSCANNER mark, including among others the following:
- United Kingdom trademark no. UK00002313916, SKYSCANNER, filed on October 23, 2002, and registered on April 30, 2004;
- International trademark registration No. 1030086, SKYSCANNER, designating, inter alia, the Russian Federation and the European Union, and registered on December 1, 2009, for services in International Classes 35, 39, and 42;
- International trademark registration No. 1133058, SKYSCANNER (logo), designating, inter alia, the United States of America, and registered on August 16, 2012, for services in International Classes 35, 39, and 42; and
- International trademark registration No. 0900393, SKYSCANNER (word), designating, inter alia, the United States and the European Union, and registered on March 3, 2006, for services in International Classes 35, 38, and 39.
The Complainant’s official website is “www.skyscanner.net”, which receives approximately 100 million visits per month, and the Complainant’s smart device application to date has been downloaded over 70 million times.
The Complainant’s services are provided in over thirty languages and in seventy currencies.
This Disputed Domain Name was registered on September 30, 2021.
The Disputed Domain Name resolves to a website containing several pay-per-click (“PPC”) links, such as “Skyscanner Flights” and “Sky Scanner”, offering services competing with the Complainant. Also, at the end of the same website there is an announcement that the disputed domain name is “on sale”.
5. Parties’ Contentions
The Complainant’s submissions may be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant argues that the Disputed Domain Name is confusingly similar to its SKYSCANNER trademark. The Complainant claims that the Disputed Domain Name is virtually identical to the Complainant’s SKYSCANNER trademark, the only difference being the addition of the letter “u” between the terms “sky” and “scanner”. Also, the generic Top-Level Domain (“gTLD”) “.com” may be ignored when assessing the confusing similarity between the trademark and the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Also, the Complainant argues that there is no evidence that the Respondent (as an individual, business, or organization) has registered trademark rights in any marks that comprise part or all of the Disputed Domain Name. The Complainant has not licensed or consented to the Respondent’s use of the SKYSCANNER trademark.
The Complainant submits that the Disputed Domain Name points to a PPC link farm and that such use cannot be considered a noncommercial use of the Disputed Domain Name, nor can such use constitute a legitimate interest when it specifically targets the Complainant’s rights for financial gain.
Also, the Complainant submits that the burden of production shifts to the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant argues that their SKYSCANNER trademark is well known.
The Complainant established that the Respondent had the Complainant’s name and trademark in mind when registering the Disputed Domain Name. The Respondent’s choice of the Disputed Domain Name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademark.
The Respondent registered the Disputed Domain Name long after the Complainant registered the SKYSCANNER trademarks and their own domain name.
Also, the Complainant argues that the Disputed Domain Name is used to confuse consumers as to an affiliation or connection with the Complainant’s business, to generate PPC revenue for the Respondent, and at the end of the website there is an announcement that that domain name is for sale.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent was aware of the Complainant’s SKYSCANNER mark when registering the disputed domain name, given the Complainant’s trademark worldwide fame. The Complainant asserts there is no other plausible reason why the Respondent would have deliberately registered a misspelling of the Complainant’s well-known SKYSCANNER mark if not to exploit and profit from the Complainant’s mark. The Complainant further submits that Respondent’s passive holding of the Disputed Domain Name does not preclude a finding of bad faith in the attendant circumstances of this case, as has been already decided in the WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical and Confusingly Similar
The Complainant’s trademark rights have been evidenced by the Complainant in the Complaint. Furthermore, is evident that the SKYSCANNER trademark is recognizable within the Disputed Domain Name. Also, the SKYSCANNER trademark has been recognized by previous UDRP panels, see, e.g., Skyscanner Limited v. Ali Karatas, Fast Line (UK) Ltd, WIPO Case No. D2016-0176 and Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983. The SKYSCANNER trademark is widely known in the travel and tourism industry.
It is well established that the misspelling of a trademark does not prevent confusingly similarity (see, e.g., section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of the letter “u” does nothing to prevent the confusing similarity of the Disputed Domain Name with the SKYSCANNER trademark.
Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
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. The consensus view among UDRP panels is that 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 disputed domain name. 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.
In the present case, the Complainant declared that it has not authorized or given any license to the Respondent in order to register, use, or include the Complainant’s trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name or has a SKYSCANNER trademark.
In these proceedings the Respondent is in default. Therefore, the Respondent did not present any evidence, which suggests that it is not making a legitimate noncommercial or fair use of the Disputed Domain Name or commonly known by the Disputed Domain Name or the name “skyscanner”.
In conclusion, the Panel finds that the Disputed Domain Name does not reflect a website that could be considered as a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
For all the above-mentioned reasons and based on the available records and evidence, the Panel finds that the Complainant has fulfilled the second element of the Policy.
C. Registered and Used in Bad Faith
The fact that the Disputed Domain Name resolves to a website with PPC links to competitors of the Complainant shows the false inference of an affiliation or association between the Complainant’s trademark and the Disputed Domain Name to be obvious – not only at the time of registration – but thereafter.
The Complainant submits that 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, by which point the Complainant already enjoyed global fame in its trademarks.
Thus, the Complainant submits that the Disputed Domain Name was registered with the Complainant’s business in mind, in a manner that constitutes bad faith. The Disputed Domain Name is used to confuse consumers as to an affiliation or connection with the Complainant’s business, and to thereby generate PPC revenue for the Respondent. That the Respondent has set up MX records indicates a willingness to communicate with those same consumers, which will only exacerbate confusion. The Disputed Domain Name poses a significant fraud risk to consumers and the Complainant. Therefore, in the absence of a response from the Respondent, on the balance of probability, the Panel is convinced that the Respondent has registered and used the Disputed Domain Name in bad faith.
Paragraph 4(a)(iii) of the Policy is satisfied.
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 <skyuscanner.com> be transferred to the Complainant.
Ada L. Redondo Aguilera
Date: December 13, 2021