WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya
Case No. DCC2020-0003
1. The Parties
The Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / petrov petya, United States of America.
2. The Domain Names and Registrar
The disputed domain names <scyscanner.cc>, <scyscanner.co> and <scyscanner.pw> are registered with
NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 March 6, 2020 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 March 10, 2020.
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 March 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2020.
The Center appointed Taras Kyslyy as the sole panelist in this matter on April 30, 2020. 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 an online travel company in London, United Kingdom, that provides a search engine and price comparison website at “www.skyscanner.net” and “www.skyscanner.com” where users can search hundreds of airlines, hotel, car rental and travel agency websites in one place. Complainant owns registrations for the SKYSCANNER trademark in numerous jurisdictions, including in the European Union (No. 0900393), with the earliest priority dating back to March 3, 2006.
The disputed domain names were registered with the same registrant on February 29, 2020 and redirect to inactive webpages. Previously upon accessing the website to which <scyscanner.pw> points, a scam warning was displayed; upon accessing <scyscanner.cc> Internet users were directed to a website displaying the Aviasales trademark, which offered travel arrangement services to users; upon accessing <scyscanner.co> also travel arrangement services were offered to users.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names replicate the Complainant’s famous trademark in aural composition, inasmuch as the disputed domain names substitute the letter “k” present in the Complainant’s trademark with the letter “c”. As the letters “k” and “c” are pronounced the same in the context of the words “skyscanner” and “scyscanner”, the Complainant submits that the disputed domain names are virtually identical to the Complainant’s trademark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain names. 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 a highly similar variation of its registered trademarks in a domain name registration. The Respondent is not commonly known as “scyscanner”. However, even if the Respondent does refer to itself as “scyscanner” the Complainant submits that the Respondent’s use of this name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor is there a bona fide use of the disputed domain names. The disputed domain names are used fraudulently inasmuch as the Respondent is posing as the Complainant to attract consumers and sell flights that do not exist. There is no evidence of that the Respondent has made demonstrable preparations to use the disputed domain names for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods and services. The use of the disputed domain names that are virtually identical to the Complainant’s trademark, to attract consumers by posing as the Complainant in order to sell consumers flights that do not exist, cannot constitute a legitimate interest or a bona fide use of the disputed domain names. Further, given the famous nature of the Complainant’s trademark and the fact that no other individual or business owns trademark rights (whether registered or unregistered) in the SKYSCANNER trademark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain names, but it is inevitable that visitors to the disputed domain names would mistakenly believe there to be association with the Complainant.
The disputed domain names were registered and are being used in bad faith. The Respondent registered the disputed domain names in the knowledge of the Complainant’s trademark rights. Upon registration the disputed domain names <scyscanner.cc> and <scyscanner.co> have been set up to commit business identity fraud, by posing as the Complainant’s business to sell non-existent flights to unsuspecting consumers. Passive use of a widely known Complainant’s trademark in a domain name <scyscanner.pw> also constitutes bad faith where there is no response and no explanation as to why the use could be in good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its registered trademark.
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLDs “.cc”, “.co” and “.pw” for the purposes of the confusing similarity test.
According to section 1.9 of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel considers the disputed domain names consist of an intentional misspelling of the Complainant’s trademark.
Considering the above, the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPOCase No. D2014-1875).
According to section 2.13.1 of the WIPO Overview 3.0 panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. According to section 2.13.2 of the WIPO Overview 3.0 panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case the Panel finds that the provided customers’ complaints addressed to the Complainant due to fraudulent activities at the disputed domain names <scyscanner.co> and <scyscanner.cc> prove these were used for illegal activity and thus cannot confer rights or legitimate interests on the Respondent.
The Respondent has no right or legitimate interests in the disputed domain name <scyscanner.pw> resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302). Currently the three disputed domain names resolve to inactive websites.
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
At the time of the registration of the disputed domain names the Respondent knew, or at least should have known about the existence of the Complainant’s priory registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally. Thus, the Panel finds that the confusingly similar disputed domain names, which consist of a misspelling of the Complainant’s trademark, were registered in bad faith.
The Panel also finds that use of the disputed domain names <scyscanner.co> and <scyscanner.cc> for the illegitimate activity is manifestly considered evidence of bad faith.
As to the disputed domain name <scyscanner.pw> the Panel notes, that according to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) illegal activity conducted by the Respondent at its other disputed domain names, and (iv) the implausibility of any good faith use to which the disputed domain name may be put. As previously noted, currently all the disputed domain names resolve to inactive websites.
Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy
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, <scyscanner.cc>, <scyscanner.co>, and <scyscanner.pw>, be transferred to the Complainant.
Date: May 14, 2020