WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Irina Ivanova

Case No. D2021-3696

1. The Parties

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

The Respondent is Irina Ivanova, Russian Federation.

2. The Domain Names and Registrars

The disputed domain names <ru-skyskanner.com> and <skyskanner.biz> are registered with Wix.com Ltd. and Network Solutions, LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrars requests for registrars’ verification in connection with the disputed domain names. On November 8 and November 17, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrants’ and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 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 November 26, 2021.

On November 23, 2021, the Center wrote to the Parties in Russian and English, in respect of the language of the proceeding (informing that the language of the registration agreement for the domain name <ru-skyskanner.com> is Russian), and invited them to submit their positions in this respect. On November 26, 2021, the Complainant requested the language of the proceeding to be English. The Respondent 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2021.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on December 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 is Skyscanner Limited, located in London, United Kingdom.

The Complainant registered many trademarks around the world and acquired trademark rights in the SKYSCANNER designation, i.a.:

- International trademark registration No. 900393 for SKYSCANNER, registered on March 3, 2006 in classes 35, 38, and 39, and

- International trademark registration No. 1030086 for SKYSCANNER, registered December 1, 2009 in classes 35, 39, and 42.

Both trademarks are registered in several jurisdictions including the European Union. The second trademark covers the Russian Federation, where the Respondent is located.

The disputed domain names <ru-skyskanner.com> and <skyskanner.biz> were registered on October 15, 2021 and on October 17, 2021. The disputed domain names appear to be inactive at the time the Complaint was filed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to enjoy a substantial and global reputation in its SKYSCANNER trademark.

The Complainant considers the disputed domain names to be confusingly similar to a trademark in which it claims to have rights.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant argues that the term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning, and that the Complainant have never given its consent for the Respondent to use its registered trademarks in domain name registrations. According to the Complainant, the Respondent is in no way affiliated with the Complainant.

Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain names primarily to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark, and that the Respondent knew of the Complainant’s trademark which enjoys “global fame” when registering the disputed domain names. The Complainant further submits that the Respondent’s passive holding of the disputed domain names constitutes use in bad faith, especially since the Respondent has taken steps to mask its identity.

The Complainant seeks a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural issue – Consolidation

The Complainant requests that this Panel accept multiple disputes 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 the disputed domain names were registered within two days of one another (October 15, 2021 – October 17, 2021), both contain the same deliberate misspelling of the Complainant’s trademark (namely, SKYSKANNER) and use highly similar domain name servers. Indeed, the Registrant name for both domain names is the same: Irina Ivanova.

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. The Respondent has not submitted a formal Response or objected to the consolidation request of the Complainant or to its arguments in support of the request.

The consensus view when determining if consolidation is appropriate in a UDRP proceeding is whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. The disputed domain names were registered within a short period of time, and both are similar misspellings of the distinctive SKYSCANNER trademark of the Complainant, and they use highly similar domain name servers. Therefore, and in the lack of any denial of it by the Respondent, it is more likely than not that the disputed domain names are under common control.

Therefore, 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.

Accordingly, the Panel decides to allow the consolidation of the disputes in relation to 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 name <ru-skyskanner.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 requests that the language of proceedings be English. It submits that the Respondent has a working knowledge of English because it has chosen to target the Complainant’s SKYSCANNER trademark, which is a portmanteau of two English words – SKY and SCANNER (or its phonetic equivalent, “skanner”).

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. Alternatively, the Complainant requests that its Complaint is accepted in English and the Response is accepted in Russian.

The Center has sent all its communications to the Respondent of the disputed domain name <ru-skyskanner.com> in both English and Russian, and invited to express the Respondent’s view on the language of the proceeding. The Respondent has not submitted any Response or any objections to the Complainant’s request that the proceedings be held in English. The Panel also notes that the Registration Agreement for the other disputed domain name is in English. This satisfies the Panel that the Respondent 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

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.

The Complainant has established rights over the SKYSCANNER trademark, duly registered in several jurisdictions across the world. Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1.

With the Complainant’s rights in the SKYSCANNER mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level-Domain (“gTLD”) in which the domain name is registered) are identical or confusingly similar to the Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

Here, each of the disputed domain names <ru-skyskanner.com> and <skyskanner.biz> represents a misspelling of the SKYSCANNER trademark (the letter “c” is replaced with a letter “k”, yet maintaining equivalent phonetical aspect), which remains easily recognizable in them. Moreover, the disputed domain name <ru-skyskanner.com> contains the letters “ru”, which is also the country code for Russian Federation, and a hyphen, which, however, does not dispel the confusing similarity. As discussed in sections 1.8 and 1.9 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of geographical terms as well as obvious misspelling of a trademark, would not prevent a finding of confusing similarity under the first element.

The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to its SKYSCANNER mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is well established that, as it is put in the WIPO Overview 3.0, section 2.1, while the overall burden of proof in the proceedings is on the complainant, 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. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names, notably by:

(i) demonstrating rights in the SKYSCANNER trademark and providing evidence on its goodwill which supports the fact that the Respondent has no rights or legitimate interests in said marks;

(ii) confirming that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s SKYSCANNER trademark or any domain names incorporating the SKYSCANNER trademark;

(iii) underlining that the Respondent is not commonly known by the disputed domain names or that the Respondent has relevant trademark rights.

According to the case file, there is nothing to suggest any bona fide use that might confer on the Respondent rights or legitimate interests in the disputed domain names.

Consequently, the burden shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain names. The Respondent, however, has failed to file a response to prove its rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.

Therefore, the Panel concludes that the Respondent does not have rights or a legitimate interests in the disputed domain names within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark SKYSCANNER as an Internet search engine in the field of travels is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names because they are confusingly similar to the Complainant’s trademark. Therefore, the Panel is convinced that the Respondent’s awareness amounts to opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, particularly: “(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”.

In this Panel’s view, it is obvious that the disputed domain names were used by the Respondent to mislead consumers into believing that travel arrangement services would be provided through the website, to which the disputed domain names pointed. Therefore, the Panel believes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks.

At the time of filing the Complaint and at the time of this this decision, the 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 Respondent 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. Prior UDRP panels have found 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 where there is no response and no explanation as to why the use could be good faith use (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003). Therefore, in the absence of a response from the Respondent this Panel finds that, on the balance of probabilities, the Respondent has registered and used the disputed domain names in bad faith.

In light of the above facts and reasons, the Panel therefore determines that the disputed domain names were registered and are being used in bad faith, and that the Complainant has satisfied the condition set out in 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 names <ru-skyskanner.com> and <skyskanner.biz> be transferred to the Complainant.

Ganna Prokhorova
Sole Panelist
Date: January 13, 2022