The Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Sharoyan Ramzik Samvelovich, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 the Complainant on September 7, 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 September 8, 2021.
On September 7, 2021, the Center wrote to the Parties in Russian and English, in respect of the language of the proceeding, and invited them to submit their positions in this respect. On September 8, 2021, the Complainant requested the language of the proceeding to be English. The Respondent did not submit any comments or requests on the language of the proceeding.
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 Respondent of the Complaint, and the proceedings commenced on September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2021.
The Center appointed Ganna Prokhorova as the sole panelist in this matter on October 20, 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 BackgroundThe Complainant is Skyscanner Limited, located in London, United Kingdom.
The Complainant registered many trademarks around the world and acquired trademark rights in the SKYSCANNER designation, i.a.:
- International trademark registration No. 900393 for SKYSCANNER, registered on March 3, 2006 in classes 35, 38, and 39, and
- International trademark registration No. 1030086 for SKYSCANNER, registered December 1, 2009 in classes 35, 39, and 42.
Both trademarks are registered in several jurisdictions including the European Union. The second trademark covers the Russian Federation, where the Respondent is located.
This disputed domain name
The Complainant considers the disputed domain name to be confusingly similar to a trademark in which it claims to have rights.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to the Complainant, the Respondent is in no way affiliated with the Complainant and does not possess any consent to use registered trademarks in the disputed domain name.
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain name primarily to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural issue – Language of the proceedingAccording to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant respectfully requests that the language of proceedings be English. It submits that the Registrants have a working knowledge of English because they have chosen to target the Complainant’s SKYSCANNER trademark, which is a portmanteau of two English words. The Complainant notes that it is not familiar with Russian and to hold proceedings in Russian would place a disproportionate burden on it because it would need to have its Complaint translated. Alternatively, the Complainant requests that its Complaint is accepted in English and the Respondent’s Response is accepted in Russian.
The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express his views on the language of the proceeding. The Respondent has not submitted any Response or any objections to the Complainant’s request that the proceedings be held in English. This satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2. Substantive IssuesTo succeed, in a UDRP complaint, a 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 the complainant has rights; and
(ii) the 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 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.
Here, although the Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of the Complainant, nor is it an admission that the Complainant’s claims are true. The burden remains with the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A UDRP panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly SimilarAccording to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.
The Complainant has established rights in the SKYSCANNER trademark.
The disputed domain name incorporates SKYSCANNER trademark in its entirety, with the addition of a generic Top-level Domain (“gTLD”) – “press”.
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 disputed domain name is identical to the Complainant’s SKYSCANNER trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Demonstrating that a respondent has no rights or legitimate interests in a domain name requires the complainant to prove a negative, which can be challenging if only the respondent is aware of its intentions with respect to the domain name and its claim of rights or legitimate interests. For that reason, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production […] shifts to the respondent.” See WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant.
The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The term “Skyscanner” is not descriptive in any way, nor does it have any generic, dictionary meaning. There is nothing in the case file showing that the Respondent owns any registered rights in “skyscanner” trademark.
The Complainant has made clear that it has not given the Respondent any permission to use its trademark in the disputed domain name which, at some point in time, resolved to a website offering travel arrangement services in direct competition with the Complainant’s core services in which the latter enjoys a reputation. The Panel also finds that there is no evidence to confirm that the Respondent has been commonly known by the disputed domain name, or is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not submitted any l response. The disputed domain name is identical to the Complainant’s trademark and as such carries a high risk of implied affiliation. As such, the Panel also finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Therefore, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy it should be established that the disputed domain name has been registered and is being used in bad faith.
As already stated, it cannot be denied that the word “skyscanner” carries distinction. Taking into account that the term “skyscanner” is not a dictionary term, but rather an original creation of the Complainant, it is not likely that the Respondent’s choice of words in the disputed domain name was random. Therefore, the Panel is convinced that the Respondent’s awareness amounts to opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, particularly: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In this Panel’s view, it is obvious that the disputed domain name was used by the Respondent to mislead consumers into believing that the travel arrangement services provided through the website, to which the disputed domain name pointed, originate from the Complainant. Therefore, the Panel believes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Panel accepts that the Complainant is also correct in asserting that this activity falls within the scope of paragraph 4(b)(iv) of the Policy and that these are circumstances that provide evidence of bad faith registration and use.
At the time of this decision, the website at the disputed domain name is inactive. Prior UDRP panels have found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trademark in a domain name where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003). Therefore, in the absence of a response from the Respondent this Panel finds that, on the balance of probability, the Respondent has registered and used the disputed domain name in bad faith.
In light of the above facts and reasons, the Panel therefore determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in paragraph 4(a)(iii) of the Policy.
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
Ganna Prokhorova
Sole Panelist
Date: November 3, 2021