Complainant is Skyscanner Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 12, 2019. 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2019. The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 12, 2019. 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 Complainant owns various trademark registrations for the SKYSCANNER Mark (or the “Mark”) including: European Union designation of International Trade Mark Registration No. 900393 for SKYSCANNER (registered on March 3, 2006) for goods in Classes 35, 38 and 39; and International Trade Mark Registration No. 1030086 for SKYSCANNER, designating inter alia Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, the European Union, Japan, Norway, Russian Federation, Singapore, Turkey and Ukraine, registered on December 1, 2009, for, inter alia, Services in Classes 35, 39 and 42. Those registrations pertain generally to services related to travel. Complainant’s website now attracts 100 million visits per month and, to date, its smart device app has been downloaded over 70 million times. Complainant’s services are available in over thirty languages and in seventy currencies. The Domain Name was registered on October 21, 2019, and resolves to a pay-per-click (“PPC”) page, which includes links to travel service. 5. Parties’ Contentions A. Complainant Complainant’s SKYSCANNER Mark is known globally. The Domain Name is virtually identical to the Mark, differing by one letter, “i”. Adding the letter “i” is not sufficient to render the visual or phonetic characteristics of the domain name distinct from Complainant’s Mark. For purposes of assessing identity and confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”). Respondent does not own any registered rights in any trade marks which comprise part or all of the Domain Name. The term “Skyscanner” is not descriptive in any way, nor does it have any generic or dictionary meaning. Complainant has not given its consent for Respondent to use a virtually identical variation of its SKYSCANNER Mark in a domain name. Respondent is not commonly-known as “Skyscanner” or “Skyiscanner”. Even if Respondent refers to itself as “Skyiscanner”, Respondent’s use of the Mark cannot be legitimate nor is there a bona fide use of the Domain Name. The Domain Name points to a parking page containing PPC links advertising travel arrangement services that originate from, inter alia, Complainant’s competitors. Because Complainant’s rights in the Mark date back to 2002, Respondent should have been aware of Complainant’s business under its SKYSCANNER Mark at the time it registered the Domain Name insofar as Complainant already enjoyed global fame under the Mark. Complainant’s Mark also enjoyed a great deal of exposure in the international media in November 2016, after Complainant was acquired by Ctrip, China’s largest online travel agency in a deal worth approximately GB 1.4 billion. It can be no coincidence Respondent chose to register a Domain Name that is highly similar to the Mark. Complainant submits that the Domain Name is a deliberate misspelling of its Mark - based on a common typographical error by users of QWERTY keyboards – in order to attract traffic to its website and encourage them to access the PPC links displayed, thereby generating revenue for Respondent. Complainant submits that the Domain Name is used to mislead consumers as to an affiliation with or connection to Complainant, for commercial gain. Further, it is logical to suggest that if Respondent does point the Domain Name to an active website in the future, such use can only be designed to take unfair advantage of Complainant’s rights in the Mark. There is a realistic and serious threat posed by Respondent’s continued ownership of the Domain Name, including the threat of a diversion of custom and the inevitable damage to the reputation that Complainant enjoys in its SKYSCANNER Mark. Respondent’s use of a WhoIs privacy service is designed to shield Respondent from its identification in UDRP proceedings. Complainant acknowledges that the use of a privacy service does not, in isolation, constitute use in bad faith. However, the failure of the Registrar and Respondent to respond to Complainant’s legitimate concerns (namely, this UDRP Complaint) points to bad faith registration and use. Without information about Respondent’s true identity, the Domain Name is used in bad faith (a) as a blocking registration to prevent Complainant from using a Domain Name that is virtually identical to its rights, for legitimate commercial purposes and (b) to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. 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 and no response and or explanation as to why the use could be good faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has provided uncontroverted evidence of its rights in the SKYSCANNER Mark by means of the aforementioned trademark registrations. It is common practice under the Policy to disregard gTLDs such as the “.com”, “.net” and “.org” portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara,WIPO Case No. D2010-1184. Insofar as the Domain Name wholly incorporates the SKYSCANNER Mark, the Panel finds that it should be regarded as at least confusingly similar to Complainant’s Mark. Merely adding a minor misspelling or typographical error of a mark – here, adding the letter “i” – does not create a new or different mark. See Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc.,WIPO Case No. D2003-0317. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corporation v. Clinical Evaluations,WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd.,WIPO Case No. D2000-0455 (“addvil.com” held confusingly similar to ADVIL). For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests It is uncontested that Respondent has no rights or legitimate interests in the SKYSCANNER Mark. Respondent has no relationship with Complainant authorizing it to use Complainant’s Mark. Furthermore, there is no evidence that Respondent has been personally identified, or commonly known, by the Domain Name or any names comprised, in whole or in part, of the SKYSCANNER Mark. There is no evidence that Respondent has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Even if Respondent refers to itself as “Skyiscanner”, Respondent’s use of the Mark cannot be legitimate nor is there a bona fide use of the Domain Name because it points to a parking page containing PPC links advertising travel arrangement services that originate from, inter alia, Complainant’s competitors. Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the SKYSCANNER Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Respondent registered the Domain Name on October 21, 2019, many years after Complainant’s above-referenced registrations issued. Given Complainant’s widespread and long-term use of the SKYSCANNER Mark, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name: (1) was formed by a common typographical misspelling of Complainant’s SKYSCANNER Mark; (2) is confusingly similar to Complainant’s Mark; (3) Respondent has not shown any legitimate use for it; and (4) points to a parking page containing PPC links advertising travel arrangement services that originate from, inter alia, Complainant’s competitors. No plausible explanation exists as to why Respondent selected the Mark to include in the Domain Name other than to trade on Complainant’s goodwill. Indeed, by pointing the Domain Name to a page of PPC sites (e.g., “All Inclusive Vacation Packages”, “Cheap Business Class Flights”, “Cheap Flight Tickets”, “Cheap Hotels”) that are in competition with Complainant’s travel services, it is clear that Respondent is intending to benefit commercially. In actual use, the Domain Name will inevitably lead to confusion of some kind. In light of Complainant’s trademark registrations and long-standing use of the SKYSCANNER Mark “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name”. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Furthermore, while Respondent’s use of a privacy service does not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642). Privacy shields might be legitimate in some cases such as protecting the identity of a critic against reprisal, but it is difficult to see why this Respondent needed to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademark against infringement and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy (see Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647, holding that use of privacy shield can be “treated as evidence of bad faith when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Such use defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting (see, e.g., Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, For the foregoing reasons, the Panel finds that Complaint has established that Respondent registered and used the Domain Name in bad faith within the meaning of 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 Domain Name Harrie R. Samaras
Sole Panelist
Date: December 18, 2019
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