WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Aim S.r.l.

Case No. DEU2020-0017

1. The Parties

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

Respondent is Aim S.r.l., Italy.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <skyskanner.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Register S.p.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 7, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On September 8, 2020, the Registry transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was November 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 3, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 4, 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 ADR Rules, Paragraph B(5).

Pursuant to the Administrative Panel decision of July 20, 2020 in Skyscanner Limited v. Bolognesi Damiano, Aim S.r.l, WIPO Case No. DEUL2020-0001, while the language of the registration agreement is Italian, the language of these ADR proceedings shall be English.

4. Factual Background

Complainant is a company incorporated in the United Kingdom in 2003 that operates a travel information, search and arrangement website.

Complainant is the proprietor of several trademark registrations for its SKYSCANNER trademark (the “Mark”), including the following marks, all of which are protected in the European Union:

- International Trademark No. 900393 for SKYSCANNER (word mark), registered on March 3, 2006 for services in classes 35, 38 and 39;
- International Trademark No. 1030086 for SKYSCANNER (word mark), registered on December 1, 2009 for services in classes 35, 39 and 42;
- International Trademark No. 1133058 for SKYSCANNER (figurative mark), registered on August 16, 2012 for services in classes 35, 39, and 42.

Complainant operates its primary website at “www.skyscanner.net”.

The disputed domain name was registered on September 27, 2018. It does not resolve to an active site. The record contains a copy of Complainant’s cease-and-desist letter to Respondent dated July 1, 2020.

5. Parties’ Contentions

A. Complainant

Complainant’s allegations may be summarized as follows:

Under the first element, Complainant states that it has well-established rights in the SKYSCANNER Mark. Complainant’s website attracts 100 million visits a month, and the SKYSCANNER app has been downloaded 70 million times. Complainant’s services are available in over 30 languages and in 70 currencies. The site is highly ranked globally and in the United Kingdom in respect of Internet traffic and engagement. Based on this, while previous Panels have recognized that Complainant enjoys considerable reputation in the Mark, Complainant submits that it enjoys a global reputation in the Mark and that the Mark is famous. The disputed domain name is identical to Complainant’s rights, the only immaterial difference being that the letter “c” is replaced by the letter “k.”

Under the second element, Complainant asserts that, so far as it is aware, Respondent does not own any registered rights in any trade mark which comprise part or the entirety of the disputed domain name. The Mark is highly distinctive in respect of Complainant’s services. Complainant has not consented to Respondent’s use of the Mark, nor is Respondent commonly known by the Mark. The disputed domain name does not resolve to an active website, therefore, there is no evidence that Respondent has made demonstrable preparations to use the disputed domain for legitimate purposes. In the proceedings regarding the language of proceedings (Skyscanner Limited v. Bolognesi Damiano, Aim S.r.l, WIPO Case No. DEUL2020-0001), Respondent placed on record its intention to use the disputed domain name in connection with a new business under a trade mark virtually identical to Complainant’s in relation to a platform that takes information from satellites. Given the famous nature of Complainant’s Mark, Respondent should have been aware of Complainant’s rights when registering the disputed domain name.

Under the third element, Complainant asserts that Respondent knew or should have known of the registration and use of the Mark prior to registering the disputed domain name, since by September 27, 2018, Complainant enjoyed a global reputation in its SKYSCANNER Mark. The Mark enjoyed international media exposure in 2016 following Complainant’s acquisition by Ctrip, China’s largest online travel agency. Therefore, Respondent registered the disputed domain name in bad faith.

Respondent’s passive holding of the disputed domain name constitutes bad faith. Complainant submits that Respondent is using the disputed domain name as a blocking registration to prevent Complainant from using the disputed domain name for legitimate commercial purposes. Once the disputed domain name is pointed to an active website it can only be used in a manner that seeks to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s Mark. Complainant’s submits that the circumstances present in Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are also present in this case, demonstrating Respondent’s bad faith. Respondent maintains a clear intention to use the disputed domain name in connection with a new business under a virtually identical trademark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for Complainant to establish:

(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.

Furthermore, Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

Complainant has provided evidence establishing that it has trademark rights in the SKYSCANNER Mark through use and registration in the European Union. This is sufficient for the Panel to make a finding that Complainant has rights recognized by European Union law for the purposes of standing to bring a Complaint under paragraph B(11)(d)(1)(i) of the ADR Rules.

In comparing Complainant’s Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain is a deliberate misspelling of Complainant’s Mark, substituting the letter “k” for the letter “c,” resulting in a word that is visually nearly identical and aurally indistinguishable from Complainant’s Mark. It is well established in decisions under the ADR Rules that the country code Top-Level Domain “.eu” is typically ignored when assessing the similarity between a trademark and a domain name.

The Panel therefore finds that Complainant has established the first element according to paragraph B11(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

Under paragraph B(11)(e) of the ADR Rules, Respondent may demonstrate its rights or legitimate interests in the disputed domain name for purposes of paragraph B(11)(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation:

(1) prior to any notice of the dispute, Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;

(2) Respondent, being an undertaking, organization or natural person, has been commonly known by the disputed domain name, even in the absence of a right recognized or established by national and/or European Union law;

(3) Respondent is making a legitimate and noncommercial or fair use of the disputed domain name without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.

Complainant has established that it has no relation with Respondent, has never authorized Respondent to use the Mark in any way and that Respondent is not commonly known by the disputed domain name. Respondent was passively holding the disputed domain name at the time of filing of the Complaint and of this Decision. Such use cannot, under the circumstances, confer on Respondent any rights or legitimate interests in the disputed domain name. See, e.g., Skyscanner Limited v. Domain Administrator, WIPO Case No. D2020-1614 and Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001).

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. The Panel notes Complainant’s assertion that in Skyscanner Limited v. Bolognesi Damiano, Aim S.r.l, WIPO Case No. DEUL2020-0001, Respondent placed on record its intention to use the disputed domain name in connection with a new business under a trade mark virtually identical to Complainant’s in relation to a platform that takes information from satellites. Even if the Panel considers such contention in this proceeding, noting the composition of the disputed domain name, and the absence of any relevant evidence supporting any potential legitimate business, the Panel finds that the disputed domain name consisting on a one-letter typographical variation of Complainant’s trademarks carries a risk of implied affiliation with the Complainant.

The Panel therefore finds that Complainant has established the second element, according to paragraph B11(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

Under paragraph B11(d)(1)(iii) of the ADR Rules, the registration or use of the disputed domain name in bad faith are considered alternate bases for a successful complaint. The Panel finds that Respondent must have been aware of Complainant at the time of registering the disputed domain name. Complainant has submitted evidence showing that Respondent registered the disputed domain name well after Complainant registered its Mark, which is highly distinctive and enjoys a global reputation. According to the evidence filed by Complainant, it has owned a registration for the SKYSCANNER Mark in the European Union since 2006 and conducts a substantial amount of business under this trademark.

Under the doctrine of passive holding, the fact that the domain name does not resolve to an active website does not prevent a finding of bad faith (see Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and cases such as Carrefour v. Manager Limited Domain / Maria Di Blasi, WIPO Case No. DEU2018-0014).

Furthermore, the Panel notes that Respondent has chosen not to file a response to the Complaint and consequently has not rebutted Complainant’s assertions. (See FNAC Darty Participations et Services and Establissements Darty et Fils v. Paul Romain, WIPO Case No. DEU2018-0003).

Under these circumstances and on this record, the Panel finds that Respondent registered the disputed domain name in bad faith, and that Complainant has established the third element, according to paragraph B11(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <skyskanner.eu> be transferred to Complainant.¹

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: November 24, 2020

¹ The remedy sought is transfer of the disputed domain name to Complainant. As Complainant is established in the United Kingdom, at the time of the submission of this decision, it satisfies the general eligibility criteria for registration of the disputed domain name set out in article 4(2)(b) of the Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. The Panel notes that the transfer of the disputed domain name is subject to Complainant satisfying the abovementioned eligibility criteria at the time of the implementation of this decision by the Registry.