WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited and ExperienceOn Ventures S.L. v. Rehman Abdur

Case No. DEU2021-0006

1. The Parties

The Complainants are Skyscanner Limited, United Kingdom, and ExperienceOn Ventures S.L., Spain, represented by Lewis Silkin LLP, United Kingdom.

The Respondent is Rehman Abdur, Cyprus.

2. The Domain Name, Registry, and Registrar

The Registry of the disputed domain name <skyscanner.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Vautron Rechenzentrum AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 25, 2021, the Registry transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 26, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on April 14, 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainants in this administrative proceeding are Skyscanner Limited (the First Complainant) and ExperienceOn Ventures S.L. (the Second Complainant).

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

The First Complainant is the exclusive owner of a number of registered trademarks consisting of the word SKYSCANNER in various jurisdictions throughout the world, including the following:

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

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

The Second Complainant is a wholly owned subsidiary of the First Complainant.

The disputed domain name was registered on June 10, 2011, and does not resolve to an active website.

5. Procedural Matters

A. Multiple Complainants

Neither the Commission Regulation (EC) No. 874/2004 (the “Regulation”) nor the ADR Rules expressly contemplate the possibility of an ADR complaint filed jointly by multiple complainants.

However, prior domain name disputes decided pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have shown that under certain circumstances a single complaint filed by more than one complainant against a single respondent may be accepted.¹

According to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[when] assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. See also Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001, and Take-Two Interactive Software, Inc. and Take-Two Interactive GmbH v. Auyhgf Awgega, WIPO Case No. DEU2020-0006.

The Second Complainant is a wholly owned subsidiary of the First Complainant, hence the co-Complainants have a common grievance against the Respondent, as they share common interests. In the circumstances, and absence of any objection on behalf of the Respondent, the Panel accepts the single consolidated Complaint against the Respondent, which it finds fair and equitable to all the parties.

B. Language of the Proceeding

Pursuant to the panel’s decision of February 1, 2021, in Skyscanner Limited v. Rehman Abdur, WIPO Case No. DEUL2020-0006, while the language of the registration agreement is Greek, the Complainant’s request for the language of these ADR proceedings to be in English was granted by the panel and accordingly the language of the ADR proceeding shall be English.

6. Parties’ Contentions

A. Complainant

The Complainants submit that the disputed domain name is identical to the rights of the First Complainant over its reputed trademark SKYSCANNER.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has not used the disputed domain name in connection with an offering of goods or services, nor has he made any demonstrable preparations to do so. Also, the disputed domain name appears to have been deleted and re-registered several times since 2011, but it remained inactive throughout. Moreover, the Respondent does not own any registered rights in any trademark which comprise part or all of the disputed domain name and the Complainants have not given their consent for the Respondent to use their registered trademarks in a domain name.

Finally, the Complainants allege that the Respondent should have been aware of the reputation of the Complainants’ business under the SKYSCANNER trademark, and it cannot be a coincidence that the Respondent had chosen to register a domain name highly similar to such trademark. The Complainants contend that the Respondent acquired the disputed domain name primarily for the purpose of disrupting the professional activities of the Complainants as the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants conclude that the Respondent has registered and used the disputed domain name in bad faith.

The Complainants request that the disputed domain name be transferred to the Second Complainant.

B. Respondent

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

7. Discussion and Findings

Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaints to succeed, it is for the Complainants 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 the 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 Regulation (EC) No. 874/2004 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

The Complainants have submitted evidence of the rights of the First Complainant for SKYSCANNER in the form of registered trademarks right in the European Union and in various other jurisdictions. For the purposes of the present proceeding, the Panel holds that the trademark registrations indicated above satisfy the requirement of having a right recognized by the European Union law.

The disputed domain name incorporates the First Complainant’s trademark SKYSCANNER in its entirety. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The assessment is not different under the ADR Rules. The country code Top-Level Domain (“ccTLD”) “.eu” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Disney Enterprises, Inc. and The Walt Disney Company Limited v. James West, Travel West, WIPO Case No. DEU2020-0011).

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

B. Rights or Legitimate Interests

Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B(11)(d)(1)(ii):

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

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

(3) the respondent is making a legitimate and noncommercial or fair use of the 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.

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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; See Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, WIPO Case No. DEU2017-0001.

In the present case, the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have established that the First Complainant holds rights over the trademark SKYSCANNER and claims that the Complainants have not licensed, authorized or permitted the Respondent to register a domain name incorporating the First Complainant’s trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “skyscanner”. The 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. For a similar finding see Skyscanner Limited v. Aim S.r.l., WIPO Case No. DEU2020-0017.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainants.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainants’ unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainants have satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary.

Nevertheless, the Panel finds it likely that the Respondent was aware of the Complainants at the registration of the disputed domain name. The Complainants have submitted evidence showing that the Respondent registered the disputed domain name well after the First Complainant registered its trademark, which is highly distinctive and enjoys a global reputation. According to the unrebutted evidence filed by the Complainants, the First Complainant has owned a registration for the SKYSCANNER trademark in the European Union since 2006 and conducts a substantial amount of business under this trademark.

As the Complainants’ trademark is well known (e.g. Skyscanner Limited v. Abdelaziz Tamim, SERVEASA, WIPO Case No. D2021-0678), noting the composition of the disputed domain name, and given that the Respondent has failed to respond to the Complaint, the Panel cannot see any plausible good faith use of the disputed domain name on the Respondent’s part. (See for a similar finding GEA Group Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC / Haila Ata, GEA Group, WIPO Case No. D2020-1672).

The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.

8. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <skyscanner.eu> be transferred to the Second Complainant, which being located in Spain, satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) No 2019/517.

Mihaela Maravela
Sole Panelist
Date: May 9, 2021

¹ Given the similarities between the ADR Rules and the UDRP, this Panel will refer to both previous UDRP decisions and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) when relevant.