Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
Respondent is Dmitriy Ivanov, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 6, 2021 the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 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 Respondent of the Complaint, and the proceedings commenced on July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 28, 2021. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 30, 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 Complainant offers various travel-related advertising, information, arrangement, search and related services under the SKYSCANNER trademark. It owns numerous registrations for the SKYSCANNER trademark including, for example, International Trademark Registration No. 900393 (registered March 3, 2006) (which designates the European Union for protection) and International Trademark Registration No. 1030086 (registered December 1, 2009). At the time of this proceeding, Complainant’s website located at “www.skyscanner.net” attracts 100 million visits per month and, to date, Complainant’s smart device app has been downloaded over 70 million times. The Complainant’s services are available in over thirty languages and in seventy currencies. Further, as of November 12, 2019 Complainant’s website at “www.skyscanner.net” was ranked 1,671st globally for Internet traffic and engagement and 107th in the United Kingdom. Several prior UDRP decisions have recognized the considerable reputation Complainant has established in its SKYSCANNER mark. See Skyscanner Limited v. Basit Ali,WIPO Case No. D2012-1983; Skyscanner Limited v. Contact Privacy Inc. Customer 1244355693 / Mrs. K Ananthan,WIPO Case No. D2019-0988. The disputed domain name was registered on June 4, 2021. At the time the Complaint was filed, the disputed domain name has been deactivated by the Registrar following Respondent’s failure to verify its WhoIs information. However, on June 17, 2021 the disputed domain name resolved to a website that appeared to imply a connection with air travel. 5. Parties’ Contentions A. Complainant According to Complainant, the disputed domain name is virtually identical to Complainant’s SKYSCANNER trademark in which Complainant has rights as demonstrated through its cited registrations, with the only minor distinction being that the disputed domain name replaces the letter “c” in SKYSCANNER with a letter “k”. Complainant asserts that the disputed domain name remains aurally identical to, and visually similar to a high degree with, Complainant’s mark. Complainant also notes that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible to ignore the generic Top‑Level Domain (“gTLD”) in which the disputed domain name is registered. According to Complainant, to its knowledge, Respondent does not own any registered rights in any trademarks, which comprise part or all of the disputed domain name. According to Complainant, the term “skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. Complainant indicates that it has not given its consent for Respondent to use Complainant’s registered trademarks in a domain name registration. According to Complainant, the use of the disputed domain name, which is aurally identical and visually similar to Complainant’s well-known SKYSCANNER mark, in connection with identical services to those provided by Complainant cannot constitute a legitimate noncommercial interest, nor a bona fide offering of goods or services. Indeed, Complainant submits that Respondent’s interest in the disputed domain name is to make money from it by creating a false association with Complainant’s business. According to Complainant, such interest cannot be legitimate by any reasonable interpretation. Complainant submits that, given that Complainant’s registered rights date back to 2002, Respondent was aware of the reputation of Complainant’s business under its SKYSCANNER mark at the time the disputed domain name was registered, by which point Complainant already enjoyed global fame in its marks. Complainant submits that Respondent uses the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site. Moreover, Respondent uses the disputed domain name to disrupt the business of a competitor. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SKYSCANNER mark through its various national and international registrations, as referenced above. With Complainant’s rights in the SKYSCANNER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. 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 the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id. Here, the disputed domain name consists of an obvious typographical variation of the SKYSCANNER mark, in which the letter “c” in the mark is replaced with a letter “k” in the disputed domain name. This variation does not prevent a finding of confusing similarity between the disputed domain name and the mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its SKYSCANNER mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed, or permitted Respondent to use the SKYSCANNER mark in any way. Respondent does not appear to be commonly known by the disputed domain name. Respondent also does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use of the disputed domain name, nor any bona fide offering of goods or services. At the time this decision was drafted, the disputed domain name merely resolved to a blank page, having apparently been suspended for Respondent’s failure to verify its contact information to the Registrar. Complainant provided some screenshot evidence that the disputed domain name previously resolved to a website depicting an airplane overlaid with text in Russian asking the user to verify that they are not a robot. There is nothing to suggest any bona fide use that might confer on Respondent any rights or legitimate interests in the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence regarding its longstanding and widespread use of the well-known SKYSCANNER mark which long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the SKYSCANNER mark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Based on the evidence on record, Respondent was previously using the disputed domain name to direct Internet users to a website depicting an airplane overlaid with text in Russian apparently asking the user to verify that they are not a robot. It is not clear from the evidence on record whether this previous site ever offered or purported to offer actual goods or services, including any travel-related services similar to and/or in competition with those offered by Complainant under its SKYSCANNER mark. The Panel notes that as of the writing of this decision, the disputed domain name appears to be inactive. Nonetheless, the Panel cannot conceive of any legitimate use for the disputed domain name by Respondent which was likely registered in order to misleadingly divert consumers to Respondent’s website located at the disputed domain name for Respondent’s own commercial gain or to disrupt Complainant’s business. See Policy, paragraphs 4(b)(iii) and 4(b)(iv). Even if Respondent had not made active use of the disputed domain name and it continued to resolve to a blank page, such use of the disputed domain name would still constitute use in bad faith. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. The passive holding doctrine applies in this case given the distinctiveness of Complainant’s mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, the use of apparently inaccurate contact information by Respondent leading to the suspension of the disputed domain name registration by the registrar, and the implausibility of any conceivable good faith use to which the disputed domain could be put by Respondent without infringing upon Complainant’s rights in its SKYSCANNER mark. The Panel finds that Respondent selected the disputed domain name with the intention of taking advantage of Complainant’s reputation by registering a domain name containing an obvious typographical variation of Complainant’s mark with the intent to ultimately use the disputed domain name for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See e.g. Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / “Madonna.com”,WIPO Case No. D2000-0847). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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 disputed domain name Brian J. Winterfeldt
Sole Panelist
Date: August 4, 2021
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