The Complainant is Skyscanner Limited, United Kingdom (“UK”), represented by Keltie LLP, UK.
The Respondent is Robert Stewart, Hush IP LLC, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2020, the Registrar 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 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020.
The Center appointed Jacques de Werra as the sole panelist in this matter on April 9, 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 Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a UK travel company, which operates a fare aggregator website and travel metasearch engine at the website “www.skyscanner.net” which attracts 100 million visits per month. The Complainant’s services are available in over 30 languages and in 70 currencies. The Complainant’s website “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the UK (in 2019).
The Complainant is the owner of various SKYSCANNER trademarks including the UK trademark No. 2313916 filed on October 23, 2002, and registered on April 30, 2004, and the International trademark No. 1030086 covering various countries (Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Japan, Norway, Russian Federation, Singapore, Turkey and Ukraine) which was registered on December 1, 2009, for various services (“the Trademark”).
The Disputed Domain Name was registered on November 15, 2014. The Disputed Domain Name redirects to several websites on rotation, including to the Complainant’s website “www.skyscanner.net”. The Disputed Domain Name is also offered for sale for USD 1,088.
5. Parties’ Contentions A. ComplainantThe Complainant claims in essence that the term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning and that the Complainant has not given its consent for the Respondent to use its Trademark for registering the Disputed Domain Name. To the best of the Complainant’s knowledge, the Respondent is not commonly-known as “Skyscannner”. However, even if the Respondent does refer to itself by that name, the Complainant submits that its use constitutes bad faith insofar as the Respondent’s interest cannot be legitimate nor can there be a bona fide use of the Disputed Domain Name (under the Policy). The Disputed Domain Name redirects to several websites on rotation, including to the Complainant’s website and there is no evidence of that the Respondent has made demonstrable preparations to use the Disputed Domain Name, nor is there any evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods and services or fair, noncommercial use of the Disputed Domain Name.
Given the famous nature of the Complainant’s Trademark and the fact that no other individual or business owns registered trademark rights in the SKYSCANNER trademark, not only is it likely that the Respondent was aware of the Complainant’s rights prior to registering the Disputed Domain Name but it is inevitable that visitors to the Disputed Domain Name would mistakenly believe there to be association with the Complainant. In this regard, given that the Complainant’s registered rights date back to 2002 and other UDRP panels have held that the Complainant enjoyed significant reputation in its SKYSCANNER trademark by at least 2012, the Complainant submits that the Respondent should have been aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the Disputed Domain Name was acquired, by which stage the Complainant already enjoyed global fame in its trademarks.
The Complainant submits that on the balance of probability, it can be no coincidence that the Respondent chose to register the Disputed Domain Name that is highly similar to the rights. The Complainant submits that the Disputed Domain Name is a deliberate misspelling of its trademark and the redirection of consumers to its website is designed to create, for financial benefit, a likelihood of confusion as to an affiliation with the Complainant’s rights. Separately, based on documents submitted in the proceedings, it appears that the Disputed Domain Name is offered for sale for USD 1,088. The Complainant submits that the Respondent uses the Disputed Domain Name with the primary intention of selling it to the Complainant for an amount that exceeds its documented out-of-pocket registration costs. Previous UDRP panels have held that, where a domain name targets a famous third party brand without any prior connection to it, in some circumstances the Respondent’s motivations can be disregarded.
Finally, the Complainant submits that the Respondent is engaged in a pattern of bad faith conduct inasmuch as it has been identified as the Respondent in five adverse UDRP decisions since 2015.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is almost identical to the Trademark except that the Disputed Domain Name contains an additional letter (“n”) which misspells the Trademark, whereby the generic Top-Level Domain (i.e. “.com”) shall be disregarded.
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name that misspells the Trademark owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark also because the website associated to the Disputed Domain Name redirects on a rotational basis to the Complainant’s official website.
Even if the argument of laches has not been raised by the Respondent (who has not participated to the proceedings), the Panel notes that a mere delay between the registration of a domain name (in this case the Disputed Domain Name was registered on November 15, 2004) and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See WIPO Overview 3.0, section 4.17.
On this basis, the Panel considers that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established evidence of any rights or legitimate interests in the Disputed Domain Name.
As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the condition of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademark and the Complainant’s activities already because the Disputed Domain Name misspells the Trademark and does not have any other meaning. Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark and to the Complainant’s activities.
The Panel notes that a complainant can prove that a respondent has registered or acquired a domain name primarily to sell the domain name to the complainant (or its competitor) for valuable consideration in excess of the respondent’s costs related to the domain name by various ways, including by establishing that the relevant domain name is misspelling an established third party trademark and by circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from or exploit the complainant’s trademark. WIPO Overview 3.0, section 3.1.1. In this case, the Disputed Domain Name misspells the Trademark of the Complainant and the use made of the Disputed Domain Name resulting from the fact that the website associated to it redirects on a rotational basis to the Complainant’s official website confirm the bad faith registration and use of the Disputed Domain Name by the Respondent.
In addition, the Panel notes that the Respondent has been found to have registered and used domain names corresponding to other established trademarks in bad faith in several other cases under the Policy. This suggests the existence of a pattern of such conduct on the part of the Respondent establishing the Respondent’s bad faith.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name
Jacques de Werra
Sole Panelist
Date: April 23, 2020