WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skyscanner Limited v. Super Privacy Service LTD c/o Dynadot and Alexey Morozov, Frost Domains

Case No. D2018-2007

1. The Parties

The Complainant is Skyscanner Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keltie LLP, United Kingdom.

The Respondents areSuper Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (“United States”) and Alexey Morozov, Frost Domains of Moscow, Russian Federation.

2. The Domain Names and Registrars

The disputed domain name <skyscannerapp.com> is registered with Dynadot, LLC. The disputed domain names <skyscaner.co>, and <skyscannercom.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2018. On September 3, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 3 and 4, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. In response to a request of clarification by the Center in relation to the existence of multiple underlying registrants, the Complainant filed an amended Complaint on September 17, 2018.

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 Respondents of the Complaint, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 15, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on October 29, 2018. 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 the owner of several trademark registrations for SKYSCANNER, including the following:

- International trademark registration No. 900393 for SKYSCANNER (word mark), registered on March 3, 2006 and designating, amongst others, the European Union, for services in classes 35, 38 and 39;

- International trademark registration No. 1030086 for SKYSCANNER (word mark), registered on December 1, 2009 and designating, amongst others, the European Union and Russian Federation, for services in classes 35, 39 and 42;

- International trademark registration No. 1133058 for SKYSCANNER (figurative mark), registered on August 16, 2012 and designating, amongst others, United States of America, for services in classes 35, 39 and 42.

The Complainant operates its main website at the domain name <skyscanner.net>, which was registered on July 3, 2002 and is used by the Complainant to provide travel arrangement services under the trademark SKYSCANNER. The Complainant’s website generates 60 million visits per month. The Complainant also owns the domain name <skyscanner.com>, which was registered on July 3, 2002.

The disputed domain names <skyscannerapp.com>, <skyscaner.co> and <skyscannercom.com> were registered on April 13, 2018, August 10, 2017 and July 4, 2018, respectively. The disputed domain names do not currently resolve to active websites. According to the screenshots submitted by the Complainant, before the filing of the Complaint, they were redirected to websites providing travel arrangement solutions and displaying the Complainant’s figurative mark (<skyscannerapp.com>, <skyscaner.co>) or a reference to the Complainant’s domain name <skyscanner.com> (<skyscannercom.com>).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are virtually identical to its trademark SKYSCANNER since they reproduce the trademark in its entirety with the mere addition of generic terms (“app” and “com”) or the deletion of a letter (“n”).

The Complainant points out that the Respondents have no rights or legitimate interests in the disputed domain names because:

- the Respondents do not own registered rights in any trademarks which comprise part or all of the disputed domain names;

- the terms “Skyscanner”, “Skyscaner” or “Skyscannerapp” encompassed in the disputed domain names are not descriptive in any way, nor do they have any generic, dictionary meaning;

- the Complainant has not given its consent for the Respondents to use its registered trademarks in domain name registrations;

- the Respondents are not commonly-known as “Skyscanner”, “Skyscaner” or “Skyscannerapp”;

- there is no evidence that the Respondents are using the disputed domain names in connection with a bona fide offering of goods and services, as they have been pointed to copycat websites offering travel arrangement services and making explicit reference to the Complainant’s logo or its domain name <skyscanner.com>;

- the Respondents are not using the disputed domain names in connection with a legitimate or noncommercial use since: i) they have failed to provide any disclosure of their relationship (or lack thereof) with the Complainant; ii) they do not have any legitimate enforceable rights; iii) the Complainant’s rights are not generic; iv) they have never received the Complainant’s authorization to use its trademark or apply to register disputed domain names; and v) the use of the disputed domain names is for commercial gain and misleadingly diverts the Complainant’s consumers.

The Complainant submits that the Respondents registered and are using the disputed domain names in bad faith for the following reasons:

- all of the disputed domain names were registered over fifteen years after the Complainant first applied to register its trademark SKYSCANNER and with knowledge of the Complainant’s rights;

- the disputed domain names have been pointed to websites containing travel aggregator tools. The website to which <skyscaner.co> has been pointed contains the Complainant’s SKYSCANNER logo and Internet users accessing the website at <skyscannerapp.com> are redirected automatically to the one available at <skyscaner.co>. The website to which <skyscannercom.com> has been pointed depicts the Complainant’s domain name <Skyscanner.com> as a badge of origin. Therefore, the Respondents are targeting the Complainant’s famous trademark in a manner that damages the Complainant’s reputation;

- the Respondents are using the disputed domain names to attract consumers for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites;

- the Respondents appear to be intentionally trading on the goodwill of the trademark in which the Complainant has rights and such trading cannot constitute a bona fide offering of goods or services;

- the Respondents’ continued ownership of the disputed domain names threatens damage to consumers and causes also damage to the reputation that the Complainant enjoys in its trademark SKYSCANNER;

- a reverse WhoIs search conducted by the Complainant against the Respondent Alexey Morozov showed that it has engaged in a pattern of bad faith registration and use of domain names containing third-party trademarks, with a particular focus on the travel industry;

- 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 trade mark in a domain name where there is no response and no explanation as to why the use could be good faith.

B. Respondents

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

(ii) that the Respondents have 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.

A. Procedural Issue: Request for consolidation

Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at 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. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)”.

The Complaint in this case was originally filed against a single respondent, namely Alexey Morozov of Frost Domains but, according to the Center’s Registrar’s verification, the disputed domain name <skyscannerapp.com> resulted registered in the name of Super Privacy Service LTD c/o Dynadot.

The Complainant, by submitting its amended Complaint, asserted that the disputed domain names are under common control based on the following circumstances:

- the disputed domain names <skyscannercom.com> and <skyscaner.co> use the same registrar and servers, display almost identical contact information and are pointed to the same IP address;

- the historical Whois records for the disputed domain name <skyscannerapp.com> show that, on April 13, 2018, it was registered in the name of Aleksei Morozov, via the current Registrar, using the same contact address, email address and phone number as <skyscannercom.com>;

- at the time the filing of the original Complaint, users accessing <skyscannerapp.com> were redirected automatically to the website at <skyscaner.co>, which bore a striking resemblance to the Complainant’s website “www.skyscanner.net”, including the reproduction of the Complainant’s figurative mark;

- the circumstance that, after the filing of the Complaint, the websites to which <skyscannerapp.com> and <skyscaner.co> resolved have been disabled shows that the two disputed domain names are under common control.

The Panel finds that the elements highlighted by the Complainant and referenced above demonstrate a common control of the disputed domain names by the Respondents. Indeed, all the disputed domain names incorporate the core of the Complainant’s trademark and have been used in connection with similar websites providing travel arrangement services which compete with the ones provided by the Complainant. Moreover, the commonalities amongst the registrants’ information (including the details shown in the historical WhoIs records of <skyscannerapp.com>) clearly demonstrate that the disputed domain names are actually held by the same entity or at least by a group of individuals or entities acting in concert.

In view of the above, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

Therefore, the Panel will now proceed to a decision on the merits of the case.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark SKYSCANNER based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.

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 a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain names (section 1.7 of the WIPO Overview 3.0). Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

The Panel notes that the disputed domain names <skyscannerapp.com>, and <skyscannercom.com> reproduce the trademark SKYSCANNER in its entirety with the addition of the descriptive term “app” and the generic suffix “com”, which do not prevent a finding of confusing similarity.

The disputed domain name <skyscaner.co> differs from the Complainant’s trademark SKYSCANNER only for one letter (“n”), which has been omitted in the disputed domain name. The Panel notes that such slight difference between the two signs is insufficient to exclude confusing similarity.

In addition, the Top-Level Domains “.com” and “.co” can be disregarded under the first element confusing similarity test, being a standard registration requirement (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not submitting a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no relationship between the Complainant and the Respondents and the Complainant has not authorized the Respondents to register or use its trademark or the disputed domain names. Moreover, there is no evidence that the Respondents might be commonly known by the disputed domain names.

The Panel finds that the Respondents’ use of the disputed domain names to redirect users to websites promoting travelling arrangement services which compete with the ones of the Complainant does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondents in bad faith.

As to bad faith at the time of registration, the Panel finds that, in view of the Complainant’s prior registration and use of the trademark SKYSCANNER in connection with the Complainant’s travel arrangement services, the Respondents were or should have been aware of the Complainant’s trademarks at the time of registration of the disputed domain names, with which they are confusingly similar.

Furthermore, the circumstance that the disputed domain names have been pointed to websites promoting identical services to the ones offered by the Complainant under the trademark SKYSCANNER and the clear reference to the Complainant’s figurative trademark or the Complainant’s domain name <skyscanner.com> on the websites to which the disputed domain names resolved, demonstrate that the Respondents were indeed well aware of the Complainant and its trademarks.

The Panel also notes that, in view of the use of the disputed domain names to divert users to the websites described above, providing travel arrangements solutions like the ones offered by the Complainant, the Respondents intentionally attempted to attract Internet users to their websites, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of their websites and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

At the time of the drafting of this Decision, the disputed domain names do not resolve to active websites. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the case at hand, in view of i) the distinctiveness of the Complainant’s trademark; ii) the Respondents’ registration of domain names confusingly similar to the Complainant’s trademark; iii) the absence of any documented rights or legitimate interests of the Respondents in the disputed domain names; iv) the Respondents’ failure to respond to the Complaint; and v) the prior use of the disputed domain names as demonstrated by the evidence submitted by the Complainant - which has not been challenged by the Respondents, the Panel finds that the current passive holding of the disputed domain names by the Respondents does not prevent a finding of bad faith registration and use.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <skyscaner.co>, <skyscannerapp.com> and <skyscannercom.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: November 12, 2018