WIPO Domain Name Decision D2021-2285 for skyscaner.online

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Skyscanner Limited v. Yuriy Morket Case No. D2021-2285 1. The Parties

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

Respondent is Yuriy Morket, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 27, 2021 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 July 28, 2021.

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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 28, 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 is Skyscanner Limited, a company that offers online services of plane tickets’ sales and travelling arrangements in over 30 (thirty) languages and in 70 (seventy) currencies, available for people all over the world. Skyscanner Limited works as an online travel agency that offers a variety of services related to tourism for those who want to plan a trip.

Complainant’s goods are sold widely and worldwide. The company’s official website receives over 100 million accesses per month and its smart device app has been downloaded over 70 million times until nowadays.

Complainant owns a wide international portfolio of registered trademarks containing the sign SKYSCANNER in a variety of jurisdictions, including the European Union, the United States of America (“United States”), Canada, United Kingdom, India, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, China, Egypt, Japan, Mexico, Norway, Russian Federation, Singapore, Turkey, and Ukraine.

Below are some examples of Complainant’s trademark registrations:

Registration No.

Trademark

Territory

International Classes

Date of Registration

900393

SKYSCANNER

European Union, and United States

35, 38, 39

March 3, 2006

1030086

SKYSCANNER

Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Botswana, Belarus, Switzerland, China, Colombia, Cuba, Egypt, European Union, Georgia, Ghana, Gambia, Croatia, Israel, Iran, Japan, Kenya, Kyrgyzstan, Democratic People’s Republic of Korea, Republic of Korea, Kazakhstan, Liechtenstein, Liberia, Lesotho, Morocco, Monaco, Republic of Moldova, Montenegro, Madagascar, North Macedonia, Malawi, Mexico, Mozambique, Namibia, Norway, Oman, Serbia, Russian Federation, Rwanda, Singapore, Sierra Leone, Syrian Arab Republic, Eswatini, Tunisia, Turkey, Ukraine. Viet Nam, Zambia, and Zimbabwe

35, 39, 42

December 1, 2009

1133058

SKYSCANNER with cloud device

Australia, Switzerland, China, European Union, Norway, Russian Federation, Turkey, and United States

35, 39, 42

October 22, 2013

TMA786,689

SKYSCANNER

Canada

35, 39, 42

January 10, 2011

Moreover, it is important to highlight that Complainant’s official domain name was registered back on July 3, 2002 and has contributed to the company’s success and good reputation. Meanwhile, the disputed domain name was registered on August 20, 2020 – several years after the registration of Complainant’s domain name and cited trademarks.

At last, it is important to note that the disputed domain name resolves to an inactive page.

5. Parties’ Contentions A. Complainant

Complainant submits that it enjoys a worldwide reputation built around the trademark SKYSCANNER (see 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) and domain name , which attracts 100 million visits per month and is ranked 1,671st globally for Internet traffic and engagement.

Complainant pleads that the disputed domain name is confusingly similar to its registered trademarks and domain name , since it is entirely and solely composed by the sign SKYSCANNER, with the difference that the disputed domain name subtracts one letter “n” of the word “scanner”. According to Complainant, the lack of the letter “n” and the Top-Level Domain (“TLD”) “.online” would not be sufficient to avoid a finding of confusing similarity under the first element.

Therefore, the disputed domain name would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy, and paragraph 3(b)(viii) and 3(b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that, as far as it is aware, Respondent does not have any rights or legitimate interests in respect of the trademark SKYSCANNER, nor is widely known by the disputed domain name, authorised or licensed to use such trademark as a domain name.

Complainant also notes that the famous nature of Complainant’s trademark SKYSCANNER, added to the fact that such sign does not have any dictionary meaning, makes it highly unlikely that Respondent was not aware of Complainant’s rights prior to registering the disputed domain name. Thus, according to Complainant, there are sufficient evidence demonstrating that Respondent’s interest on the use of the trademark SKYSCANNER would not be legitimate.

In addition, Complainant alleges that it has submitted a prima facie case to prove that Respondent does not have any rights or legitimate interest over the disputed domain name, so that burden of production shifts to Respondent, who must rebut Complainant’s prima facie showing. In case Respondent fails in submitting a response, Complainant believes that the silence must lead to a presumption that Respondent is unable to prove the existence of such rights or legitimate interests.

Therefore, in this case, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.

At last, Complainant states that the disputed domain name was registered and is being used in bad faith.

Complainant affirms that it is very likely that Respondent was well aware of its reputation, given that (i) Complainant’s trademark rights date back to 2006, while the disputed domain name was registered only on August 20, 2020; and that (ii) the trademark SKYSCANNER enjoyed considerable international exposure in 2016, when Complainant’s business was acquired in a deal of approximately GBP 1.4 billion by the company “Ctrip”, one of China’s largest online travel agencies.

Furthermore, Complainant claims that there is an overwhelming likelihood that Respondent intends to take unlawful advantage of the well-known character and reputation of the trademark SKYSCANNER to obtain financial gain. According to Complainant, the way Respondent seeks to achieve that profit is unclear, since it may intend to sell the disputed domain name to Complainant or to a competitor; or even set up a service in direct competition to Complainant’s. In Complainant’s opinion, the disputed domain name cannot be used lawfully, which would necessarily mean a bad faith use by Respondent.

Finally, Complainant affirms that Respondent’s passive holding of the disputed domain name which incorporates Complainant’s widely known trademark would also be an indication of a bad faith use, as repeatedly recognized by previous UDRP Panels.

Therefore, Complainant sustain that paragraph 4(a)(iii) and 4(b) of the Policy, and paragraph (b)(ix)(3) of the Rules would also be fulfilled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark rights over the sign SKYSCANNER, which is registered in many jurisdictions, and that the disputed domain name incorporates such trademark in its entirety, with the absence of one letter “n”.

The lack of one letter “n” is a trivial variation that does not avoid a finding of confusing similarity with the trademark SKYSCANNER, and the TLD (in this case “.online”) is a necessary component for the registration and use of a domain name.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainants’ trademark and so the requirement of the first element of paragraph 4(a) of the Policy is entirely satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

Firstly, the Panel finds that Complainant succeeds in demonstrating that Respondent was aware of Complainant’s rights to the trademark SKYSCANNER at the time of registration of the disputed domain name , especially when considering that (i) SKYSCANNER is a well-known brand with reputation worldwide, as recognized by previous UDPR panels; and that (ii) the disputed domain name was registered by Respondent on August 20, 2020, many years after the registration of Complainant’s trademarks listed in section 4 of this decision. In addition, the Panel finds that “Skyscanner” is a widely-known platform and believes the disputed domain name may cause Internet users’ confusion, since it incorporates Complainant’s trademark almost in its entirety.

In addition, the fact that the disputed domain name is inactive does not preclude a finding of bad faith use under the doctrine of passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. As considered in the referred decision, some relevant factors must be considered in applying the passive holding doctrine, including: (i) the degree of distinctiveness or reputation of complainant’s mark, (ii) the failure of respondent to submit a response, (iii) respondent’s hiding of its identity or using of false contact details, and (iv) the lack of any circumstance capable of demonstrating that respondent is using the domain name in good faith.

Applying these factors to the present case, it can be concluded that (i) Complainant’s trademark SKYSCANNER is distinctive and well known; (ii) Respondent did not reply to Complainant’s contentions; (iii) Respondent has sought to hide its identity by using a privacy service; and (iv) there is no evidence that could lead the Panel to think that the disputed domain name is being used legitimately and in good faith. Therefore, Respondent’s passive holding of the disputed domain name represents a finding of bad faith.

Given all the above-mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied 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 name be transferred to Skyscanner Limited.

Gabriel F. Leonardos
Sole Panelist
Date: October 12, 2021

Full & Egal Universal Law Academy