WIPO Domain Name Decision D2021-1946 for skyscanner.bar, skyscanner.fit, skyscanner.host, skyscanner.rent

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Skyscanner Limited v. Alexey Polivaiko, Denis Lopstere, Koka Blant, Alex Mosev Case No. D2021-1946 1. The Parties

The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.

The Respondents are Alexey Polivaiko, Denis Lopstere, Koka Blant, and Alex Mosev, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names , , , and (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2021.

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 June 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 9, 2021.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 7, 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 Rules, paragraph 7.

4. Factual Background

The Complainant is the proprietor of, inter alia, the following trademark rights:

- European Union Trade Mark No. 900393 for SKYSCANNER (registered on March 3, 2006);

- International trademark registration No. 1030086 for SKYSCANNER, designating inter alia, Armenia, Australia, Azerbaijan, Bosnia & Herzegovina, Belarus, China, Egypt, European Union, Japan, Mexico, Norway, Russian Federation, Singapore, Switzerland, Turkey, and Ukraine (registered on December 1, 2009);

- United States of America trademark registration No. 4420284 for Skyscanner & Cloud device (registered on October 22, 2013);
- Indian trademark registration No. 1890840 for SKYSCANNER (registered on December 2, 2009);
- United Kingdom trademark registration No. 2313916 for SKYSCANNER (registered on April 30, 2004);
- Canadian trademark registration No. TMA786689 for SKYSCANNER (registered on January 10, 2011); and
- New Zealand trademark registration No. 816550 for SKYSCANNER (registered on October 7, 2010).

The Domain Names were registered on the dates indicated below:

- - March 26, 2021;
- - April 12, 2021;
- - March 30, 2021; and,
- - June 6, 2021.

The Domain Names and resolve to websites containing various pay‑per-click (“PPC”) links, including to competitors of the Complainant. The Domain Names and do not resolve to active websites.

5. Parties’ Contentions A. Complainant

The Complainant substantially alleges the following:

The Domain Names are identical to the Complainant’s SKYSCANNER trademark.

The Respondents have no rights or legitimate interests in respect of the Domain Names. So far as the Complainant is aware, the Respondents do not own any registered rights in any trademark which comprise, either partially or in its entirety, the Domain Names. The term “skyscanner” is not descriptive in any way, nor does it have any generic or dictionary meaning. The Complainant has not given its consent for the Respondents to use its registered trademarks for domain name registrations.

The Domain Names and resolve to websites containing PPC links that advertise services of the Complainant’s competitors. The other two Domain Names, and , are inactive.

Given the famous nature of the Complainant’s SKYSCANNER 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 Respondents were aware of the Complainant’s rights prior to registering the Domain Names, but it is inevitable that visitors of the websites to which the Domain Names resolve would mistakenly believe that they are associated with the Complainant.

The Respondents registered and are using the Domain Names in bad faith. Given that the Complainant’s registered rights date back to 2002, the Complainant submits that the Respondents were aware of the reputation of the Complainant’s business under its SKYSCANNER trademark at the time the Domain Names were registered, by which point the Complainant already enjoyed global fame in its trademarks. There can be no plausible explanation for this, other than the Respondents sought to profit illegitimately by misleading consumers into believing that the Domain Names are connected to the Complainant’s business, and making money out of this confusion. This is certainly the case with respect to and . As regard the other two Domain Names, and , the Complainant submits that the Respondents’ passive holding of these Domain Names constitutes use in bad faith, considering that the SKYSCANNER trademark is widely known.

B. Respondents

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

6. Discussion and Findings 6.1 Procedural Matter – Consolidation

The Panel notes that the Complaint has been filed against multiple Respondents. The consensus view when determining if consolidation is appropriate in a UDRP proceeding is 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. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the disputed domain names are subject to common control, noting: the Respondents’ physical addresses are located in the same postal area, the Domain Names were registered within a three month period, the Domain Names were registered via the same Registrar, and the Domain Names use the same or highlight similar domain name servers. The Respondents have not objected to the Complainant’s consolidation request or otherwise participated in the proceeding.

Accordingly, the Panel finds the Domain Names are likely subject to common control and consolidation would be fair and equitable to the Parties, as well as procedurally efficient.

6.2 Substantive Analysis

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the 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 Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has clearly established that it is the proprietor of several trademark registrations in different jurisdictions for SKYSCANNER, that were registered several years before the registration of the Domain Names.

Each of the Domain Names incorporate “skyscanner” in its entirety, with the addition of a generic Top-level Domain (“gTLD”). It is well established that gTLDs may be disregarded in the assessment of similarity between a contested domain name and a complainant’s trademark (see section 1.11.1 of the WIPO Overview 3.0). Therefore, the Panel finds that the Domain Names are identical to the Complainant’s SKYSCANNER trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden of production, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0).

In the present case the Respondents have failed to submit a response. Considering all of the evidence presented in the case and the Complainant’s contentions that the Respondents have no rights or legitimate interests in the Domain Names and that the Respondents have not been authorized to use the SKYSCANNER trademark, leads the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

It is established that the Complainant has registered the SKYSCANNER trademark in several jurisdictions. Further, previous UDRP panels have found the Complainant’s SKYSCANNER trademark enjoys considerable reputation (see, e.g., Skyscanner Limited v. Basit Ali, WIPO Case No. D2012-1983 and Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs. K Ananthan, WIPO Case No. D2019-0988). Considering the evidence presented in this case, the Panel sees no reason to make any other assessment than previous UDRP panels in this regard. Taking this into account and the fact that the Domain Names are identical to the Complainant’s SKYSCANNER trademark, the Panel finds that the Respondents must have been aware of the SKYSCANNER trademark at the time of registration of the Domain Names.

Further, the websites to which the Domain Names , , and currently resolve, include links to third party websites which provide services that are of the same nature as several of the services covered by the Complainant’s trademark registrations for SKYSCANNER. This is a clear indication that the Respondents have registered the Domain Names merely to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Domain Name currently resolves to a blank page (at the time the Complaint was filed the Domain Name also resolved to a blank page). Non-use of the Domain Names does not prevent a finding of bad faith, in the present circumstances, under the doctrine of passive holding. The Panel also notes that the Domain Names, being identical to the Complainant’s trademark, carry a high risk of implied affiliation, and finds the lack of response by the Respondent or plausible good faith use to which the identical Domain Names may be put affirms a finding of bad faith.

Considering what has been stated above, the Panel finds that the Respondents have registered and are using the Domain Names in bad faith.

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 Names, , , , and , be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: September 21, 2021

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