Complainant is Skyscanner Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Islam Omar, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 3, 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 September 6, 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 September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Response was filed with the Center on September 17, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 13, 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 BackgroundFounded in 2003, Complainant provides travel-related services, primarily via its Internet search engine and its mobile application. According to Complainant, “Skyscanner is a leading global travel search site, a place where people are inspired to plan and book direct from millions of travel options at the best process”. Complainant states that its services are available in more than 30 languages and 70 currencies.
Complainant’s main website is “www.skyscanner.net”. According to Complainant, that website receives 100 million visits per month, and Complainant’s smart device app has been downloaded more than 70 million times. Complainant’s website recently ranked as the number 1,671 website globally in terms of Internet traffic and engagement, according to Alexa.
Complainant holds multiple registered trademarks for SKYSCANNER, including United Kingdom Intellectual Property Office Reg. No. UK00002313916 (filing date October 23, 2002 and registration date April 30, 2004) for, among other things, “operating of a search engine; all relating to travel”.
Complainant also holds International Reg. No. 900393 (registered on March 3, 2006 and designating European Union) for “advertising services provided via the Internet, opinion polling, data processing, provision of business information”, and related services, as well as “travel information accessible via a mobile phone”.
In addition, Complainant holds International Reg. No. 1030086 for SKYSCANNER (registered December 1, 2009 and designating numerous jurisdictions including European Union, Turkey, China, Japan, Egypt, Australia, and Switzerland) for “advertising services provided via the Internet, opinion polling, data processing, provision of business information”, and related services, as well as “travel information and arrangement services provided from an Internet website”.
Annexed to the Complaint are several media articles from 2016 discussing the acquisition of “Skyscanner”, typically referred to in these articles as “the airfare comparison website” or some similar description.
Previous panels in UDRP cases have recognized the renown of the SKYSCANNER trademark. See, e.g., Skyscanner Limited v. Basit Ali,
WIPO Case No. D2012-1983 (acknowledging “compelling evidence that [Complainant’s] SKYSCANNER trade mark enjoys considerable reputation among potential customers”).
The Domain Name was registered on December 17, 2018. The Domain Name currently resolves to a web page featuring pay-per-click (“PPC”) hyperlinks such as “Skyscanner Flights”, “Ryanair Flights”, “Easyjet Flights”, and other links. The Domain Name previously resolved to a website purporting to provide booking services for “Cheap Flights”.
In his very brief Response, Respondent states that “skyscanner is a descriptive term consists [sic] of English words that can be found in any English dictionary”. Respondent states that his “domain website was not active in anyway (no advertisement, no backlinks, no content, no shares, etc.)”. Respondent does not address the evidence in the Complaint that his Domain Name had at one time resolved to a website purporting to provide airline booking services, and later resolved to a website with hyperlinks to companies in competition with Complainant. Also, Respondent does not deny having knowledge of the SKYSCANNER trademark when he registered the Domain Name in 2018.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent’s substantive reply to Complainant’s allegations and evidence is summarized above in the “Factual background” section.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the trademark SKYSCANNER through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The addition of the number “24” is inconsequential, as the SKYSCANNER trademark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not articulated any potentially legitimate reason for registering the Domain Name, other than the fact that the Domain Name includes two ordinary English words, “sky” and “scanner”. This explanation does not vest Respondent with legitimacy here, though, as it is the precise combination of these two words that gives rise to suspicion of nefarious motives targeting the Complainant.
Moreover, the fact that Complainant provided screenshot evidence that Respondent was using the Domain Name for a website seeking economic gain through consumer confusion, and Respondent merely stated that he never used the Domain Name to post content, does not enhance the Panel’s confidence in Respondent’s credibility here – at minimum, once this would have been raised, the Respondent could have claimed (if it were the case) that the ads were posted by the Registrar and he has since sought to disable their appearance; this he did not do.
None of the above-quoted “safe harbors” under Policy paragraph 4(c) apply here, and the Panel cannot conceive of another legitimate interest Respondent may have with regard to the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. The Panel finds it very likely that Respondent had Complainant’s well-established SKYSCANNER trademark in mind when he registered the Domain Name in 2018; indeed it is almost implausible that he would not have. The combination of terms to arrive at the disputed domain name seems like one that can only realistically refer to the Complainant. The content of the website to which the Domain Name at various moments resolved – first, providing airline booking services and later, providing PPC links to the sites of Complainant’s competitors – furthermore renders this conclusion virtually inescapable.
With respect to bad faith use of the Domain Name, the Panel concludes that Respondent has run afoul of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: October 27, 2021