WIPO Arbitration and Mediation Center

EXPERT DECISION

Skyscanner Limited v. S. D.

Case No. DCH2020-0013

1. The Parties

Claimant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

Respondent is S.D., Egypt.

2. Domain Name

The dispute concerns the following domain name <skyskanner.ch> (“Disputed Domain Name”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the Disputed Domain Name. On June 19, 2020, SWITCH transmitted by email to the Center its verification response confirming that Respondent is listed as the holder of the domain name and providing the relevant contact details.

The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution procedures for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on January 1, 2020.

In accordance with the Rules of Procedure, paragraph 14, the Center formally notified Respondent of the Request, and the Dispute resolution procedure commenced on June 26, 2020. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was July 16, 2020.

Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure. Accordingly, no Conciliation conference has taken place within the deadline specified in paragraph 17(b) of the Rules of procedure.

On July 21, 2020, the Center notified Claimant accordingly, who on July 22, 2020, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.

On August 13, 2020, the Center appointed Peter Wild as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.

4. Factual Background

Claimant is the owner of the following Swiss Trade Mark Registrations:

- Swiss designation of International Trade Mark Registration No. 1030086 for SKYSCANNER (WORD), covering, inter alia, “travel information and arrangement services provided from an Internet website providing information via means of a global computer network” in Class 39; with statement of grant of protection in Switzerland on May 19, 2011; and

- Swiss designation of International Trade Mark Registration No. 1133058 for SKYSCANNER (LOGO), with statement of grant of protection in Switzerland dated on January 30, 2014 and covering, inter alia, “travel information and arrangement services provided from an Internet website providing information via means of a global computer network”.

Claimant is also the owner of the domain name <skyscanner.ch> registered on August 31, 2005, which Claimant uses to describe its services. Claimant’s business under the SKYSCANNER trade mark is ranked 173rd in Switzerland in national Ínternet traffic and engagement. Claimant is active and well known in the business of online travel related search and booking services.

The Disputed Domain Name was registered on March 4, 2016. Respondent uses the Disputed Domain Name to offer travel arrangement services in direct competition with Claimant’s business and in direct conflict with Claimant’s registered trade marks.

Respondent is also owner of a number of other domain names such as <marriott.kz>, <michaelkors.kz> or <victorinox.kz> which appear to be imitations or misspellings of other well know trade marks.

5. Parties’ Contentions

A. The Claimant

According to Claimant, the Disputed Domain Name is almost identical to its own trademark and domain name. The only difference being the letter “k” instead of “c”, a difference which can hardly be recognized visually and not at all phonetically.

In view of the high level of similarity between the signs and between the services, Internet users are, according to Claimant, at risk to believe that there is a link between Claimant and Respondent or that Respondent’s website is operated by Claimant. In addition, there is a risk that the user will by mistake reach Respondent’s website by mistyping the domain name of Claimant. There is therefore, in Claimant’s view, a likelihood of confusion between the Disputed Domain Name and Claimant’s earlier marks in the sense of Art. 3 LPM.

Claimant submits that the registration and use of the Disputed Domain Name is therefore clearly infringing Claimant’s trade mark rights under the law of Switzerland.

Respondent is also owner of a number of other domain names such as <Marriott.kz>, <Michaelkors.kz> or <victorinox.kz> which appear to be appropriations, imitations or misspellings of other well know trademarks, which shows a pattern of unfair competition behavior. Such registering domain names that include a famous trade mark (or a deliberate misspelling thereof) is contrary to the principle of good faith and looks, in Claimant’s view, like Respondent deliberately and in bad faith chose a domain name that could be mistaken with Claimant’s marks and domain name, for a commercial gain. In this respect, Respondent has acted in violation of Article 2 UCA.

B. Respondent

Respondent did not reply to Claimant’s contentions.

6. Discussion and Findings

A. The Claimant has a right in a distinctive sign under the law of Switzerland

Claimant is the owner of the following Swiss Trade Mark Registrations:

- Swiss designation of International Trade Mark Registration No. 1030086 for SKYSCANNER (WORD); and

- Swiss designation of International Trade Mark Registration No. 1133058 for SKYSCANNER logo, with statement of grant of protection in Switzerland dated on January 30, 2014.

In addition, the Expert notes that Claimant is the owner of domain name <skyscanner.ch> registered on August 31, 2005, that Claimant’s business under the SKYSCANNER trade mark is ranked 173rd in Switzerland in national internet traffic and engagement, and that Claimant is active and well known in the business of online travel related search and booking services.

The Expert therefore holds that Claimant has a right in a distinctive sign SKYSCANNER for Internet related travel services under Swiss law.

B. The allocation or use of the domain name constitutes a clear infringement of a Right in a distinctive sign which the Claimant owns under the law of Switzerland

According to Art. 13 section 1 LPM, the right to a trade mark confers to its owner the exclusive right to use the mark for the goods of registration. Art. 13 section 2 lit. b. and c. LPM specify that the owner of a mark can forbid third parties from using the mark to offer goods or services.

Respondent’s registration and use of the Disputed Domain Name started clearly after the date from which Claimant’s registered trade mark was protected and after the date on which Claimant registered the Disputed Domain Name.

The Disputed Domain Name is highly similar to Claimant’s trademark. It is furthermore used for services which are identical or at least highly similar to the services which Claimant renders under the trade mark SKYSCANNER and for it enjoys trade mark protection in Switzerland. This results in a likelihood of confusion in the sense of Art. 3 sec. 1 lit. c) LPM, see BGE 128 III 403.

In addition, Respondent’s registration and use of the Disputed Domain Name, also in the context of the broader behavior of Respondent with more domain name registrations which are very close to well known trademarks, show that Respondent deliberately and in bad faith chose a domain name that could be mistaken with Claimant’s marks and domain name, for a commercial gain. In this respect, Respondent has acted in violation of Article 2 and 3 lit. d UCA.

Respondent didn’t file an answer or comments in the proceedings. The Expert therefore relies on the allegations brought forward by Claimant as far as they are supported by reasonable evidence.

7. Expert Decision

For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the Disputed Domain Name, <skyskanner.ch>, be transferred to Claimant.

Peter Wild
Expert
Date: August 17, 2020